COPYRIGHT BOARD OF CANADA

SOCAN Tariff 22.A The Making Available Amendment

_______________________________________________________________________ SUBMISSIONS OF MUSIC CANADA on the MAKING AVAILABLE AMENDMENT _______________________________________________________________________

August 21, 2013

MCCARTHY TTRAULT LLP Suite 5300 Toronto Dominion Bank Tower Toronto ON M5K 1E6 Barry B. Sookman Tel: (416) 601-7949 Fax: (416) 868-0673 bsookman@mccarthy.ca Daniel G.C. Glover Tel: (416) 601-8069 Fax: (416) 868-0673 dglover@mccarthy.ca SOLICITORS FOR MUSIC CANADA

TABLE OF CONTENTS

PART I OVERVIEW ............................................................................................................. 1 PART II ISSUES..................................................................................................................... 3 PART III STATEMENT OF ARGUMENT......................................................................... 5 A. B. WHAT IS THE SCOPE OF THE MAKING AVAILABLE RIGHT UNDER THE WIPO TREATIES? 5 THE CANADIAN IMPLEMENTATION OF THE WIPO TREATIES .......................................... 10

C. THE DEEMING CLAUSE IN S. 2.4(1.1) IMPLEMENTS A COMPREHENSIVE MAKING AVAILABLE RIGHT ...................................................................................................................... 14 D. THE OBJECTORS THEORIES LEAVE SIGNIFICANT GAPS IN COVERAGE ........................... 22 i. The Reproduction Right Is Fundamentally Different in Nature from the Making Available Right and Would Leave Significant Gaps in Coverage ....................................... 25 ii. The Authorization Right Is Different in Nature from the Making Available Right ..... 30 iii. The Distribution Right Applies only to Tangible Objects and Does Not Deal with the Issue of Exhaustion ............................................................................................................... 33 iv. Conclusion .................................................................................................................... 33 E. THE OBJECTORS HAVE MISCONSTRUED ESA AND ROGERS ............................................. 35 F. THE EXPERT REPORTS OF THE OBJECTORS DO NOT IDENTIFY AN ADEQUATE ALTERNATIVE TO THE COMMUNICATION RIGHT ......................................................................... 46 G. OTHER POLICY CONSIDERATIONS ................................................................................... 60

PART IV TABLE OF AUTHORITIES.............................................................................. 62

PART I OVERVIEW 1. This is the reply of Music Canada to the responses of the Networks, Apple Inc. & Apple

Canada Inc., the Entertainment Software Association and the Entertainment Software Association of Canada, Cineplex Entertainment LP, the Canadian Association of Broadcasters, and Microsoft Corporation (the Objectors). 2. Music Canada is a non-profit trade association which represents the major recording

labels who create and distribute the vast majority of sound recordings sold in Canada. Its members are engaged in all aspects of the recording industry, including the manufacture, production, promotion and distribution of music. Music Canada member companies actively develop and nurture Canadian talent throughout the world. 3. Music Canada has a strong interest in this proceeding arising from the tariff proceedings

before this Board in which it is a participant and for the following reasons: a) As the Board stated in its Notice of December 7, 2012, the issue of making available certainly is not limited to a single SOCAN tariff, and probably not limited to SOCAN itself [but] will have some impact on the interpretation of the same right with respect to other works, performances and recordings, especially if the Boards decision is judicially reviewed.1 A decision will also have implications for licensing rights and enforcement rights. The Board must be alive to the numerous different contexts in which Parliament intended the making available right (MAR) to apply, including future contexts that may be difficult to anticipate at present.2

b)

4.

The central question in this proceeding is what Parliament intended and achieved by

inserting the deeming clause into s. 2.4(1.1) of the Act, which provides that: For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it [i.e. the work or other subject matter] available to the public by telecommunication in a way that allows a member of the public

See Ficsor Report at pp. 3-5; Report of Silke von Lewinski (filed jointly by Music Canada and CSI on August 21, 2013) at 41-43 (explaining why expressed considerations for the WCT are also applicable in the WPPT Treaty history). As used herein, WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT, and, together with the WCT, the WIPO Treaties). 2 As the Supreme Court recently explained, questions before the Board overlap with litigation taking place in the federal and provincial courts: Rogers Communications Inc. v. SOCAN, 2012 SCC 35 at 15.

-2to have access to it [i.e. the work or other subject matter] from a place and at a time individually chosen by that member of the public.3 5. Music Canada contends that the purpose of this deeming clause was to expand the

meaning of the word communicate in s. 3(1)(f) to accommodate any and all manner of providing access to a work, regardless of how that work might eventually be consumed. Given the intent of the WIPO Treaties to cover comprehensively any interactive content provision over the Internet and other digital networks, the MAR applies to the offer of content to the public as well as to all elements of the transmission to the end user, should they occur. Any lesser coverage would leave gaps in protection.4 6. There is no credible alternative right in the Copyright Act (the Act) that fulfils

Parliaments intent to implement its entire WCT MAR treaty commitment via the Copyright Modernization Act. Recognizing the creation of a unified MAR under the communication right is the only outcome that: a) b) c) Reflects Parliaments stated intent in passing the Copyright Modernization Act; Makes sense of the specific deeming provision mechanism used to insert the MAR into the Act; Covers all forms of making available so as to permit Canada to fully comply with Canadas treaty obligations under the WCT; and

Copyright Act, s. 2.4(1.1). The Board should also consider what Parliament intended and achieved with the amendments to ss. 15(1.1)(d) and 18(1.1)(a) of the Act (together with s. 2.4(1.1), the making available amendments). Paragraph 15(1.1)(d) creates a right for performers as follows: to make a sound recording of it available to the public by telecommunication in a way that allows a member of the public to have access to the sound recording from a place and at a time individually chosen by that member of the public and to communicate the sound recording to the public by telecommunication in that way; Paragraph 18(1.1)(a) creates a right for makers of sound recordings as follows: to make 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 and to communicate it to the public by telecommunication in that way; 4 von Lewinski Report, 15; Reinbothe and von Lewinski, The WIPO Treaties 1996 (London: Butterworths) at 108 (Reinbothe and von Lewinski); Sterling, World Copyright Law, 3rd ed. (London: Sweet & Maxwell, 2008) at 471-72 (Sterling); Sam Ricketson and Jane Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, 2nd ed. (New York: Oxford University Press, 2006) at 12-57 (Ricketson and Ginsburg); Ficsor, The Law of Copyright and the Internet (Oxford UP, 2002) at 493, 496 (Ficsor).

-3d) Is consistent with the principles of interpretation established by the Supreme Court for construing the Act, including the principles laid down in the ESA and Rogers cases.

Any other interpretation of the making available amendments would create numerous gaps in protection in the digital environment, gaps the MAR was expressly intended to eliminate. 7. The arguments of the Objectors would significantly narrow a right that Parliament and

the international community intended to be broad, flexible and technology-neutral, by inexplicably limiting its application to performance-based activities. The Objectors assertions are at odds with the technologically neutral, open-ended design of the MAR under the WIPO Treaties, which was intended to apply predictably and comprehensively to all acts of making available regardless of the eventual form in which content might be consumed. 8. The suggestion of the Objectors that Parliament meant to splinter significant parts of

Canadas making available obligation into the reproduction, authorization, and/or distribution rights is completely unsupported by the legislative history.5 It is untenable because it would expose identical acts of making available to markedly different legal standards, with numerous acts of making available left unaddressed by Canadian law. It would also result in fragmented rights, the existence of which would ultimately depend on the vagaries of selected technologies and business models and on whether content is made available as a stream or a download, a distinction that is increasingly becoming blurred in the marketplace.The Objectors novel interpretation of the MAR is contrary to the express intent of Parliament, to the principles of technological and media neutrality, and to the holdings of the Supreme Court in the ESA and Rogers cases. It does not survive even the mildest scrutiny. PART II ISSUES 9. The issues raised by the Objectors and addressed by Music Canada are as follows: a) b) What is the scope of the MAR under the WIPO Treaties? What was Parliaments intention in passing the MAR provisions in the Copyright Modernization Act?

Submissions of the Networks, 11-12, 50, 80, 84; Apple Inc. and Apple Canada Inc., 8, 22-24, 45, 50-54; ESA and ESA Canada, 8; Cineplex Entertainment LP, 7-8, 51-54, 57-63, 65-79; Submissions of Microsoft, 47-55; Submissions of the Canadian Association of Broadcasters at 3.

-4c) d) e) What is the effect of the deeming provision in s. 2.4(1.1)? Could other candidate MAR rights (such as the reproduction, authorization or distribution rights) fully cover Canadas WIPO Treaty obligations? Does the decision in ESA require an interpretation of ss. 2.4(1.1) and 3(1)(f) that precludes its application to making available of copies, including downloads of musical works?

10.

In respect of these issues, Music Canada will argue that: a) Under the WIPO Treaties, the MAR was intended to be broad, flexible and technology-neutral, and to apply to the provision of access to content, without regard to how that content might eventually be consumed. Given the intent of the WIPO Treaties to cover any interactive content provision, the MAR also applies to all elements of the transmission to the end user, should a transmission occur. Parliaments intent in passing the Copyright Modernization Act was to achieve full compliance with the WIPO Treaties by creating comprehensive MARs via the deeming clause in s. 2.4(1.1) and the amendments in ss. 15(1.1)(d) and 18(1.1)(a). There is no evidence whatsoever that Parliament meant to adopt a patchwork solution used nowhere else in the world. Deeming clauses artificially import into a word or an expression an additional meaning besides their normal meaning. In s. 2.4(1.1), Parliament intentionally gave the terms communicate an expanded meaning to make Canadian law fully compliant with the WCT MAR obligations under the WIPO Treaties. ESA and Rogers make it clear that the MAR in s. 3(1)(f) must be interpreted to include making available of streams and downloads and other means of providing access to works, as this is the only interpretation that coheres with the interpretive principles laid down by the Supreme Court. This is: (i) the only outcome that accords with the legislative history, which discloses Parliaments focus not on a copy- or performance-related activity, but the provision of public access to content; (ii) the only outcome that deals with the language of the MAR in s. 2.4(1.1), the only new right in the Act associated with providing access to copyright works; (iii) the only technologically- and media-neutral outcome, in that all provision of access to content is encompassed under a single legal right; (iv) the only reading that is consistent with the decisions in ESA and Rogers, which both authoritatively construed s. 3(1)(f); and (v) the only outcome that is consistent with the Supreme Courts decision in Bishop v. Stevens.

b)

c)

d)

-5e) The right of reproduction is separate and distinct in theory and in practice from the MARs. It cannot be used as proposed by the Objectors to satisfy Canadas WIPO Treaty obligations relating to the making available of downloads of copyrighted content. PART III STATEMENT OF ARGUMENT A. WHAT IS THE SCOPE OF THE MAKING AVAILABLE RIGHT UNDER THE WIPO TREATIES? 11. The Objectors and their experts do not dispute that the WIPO Treaties were intended to

cover both the making available of downloads and the making available of streams. They also agree that different implementation methods under the umbrella solution are possible only if the WIPO Treaties are fully complied with, including that there not be any gaps in protection.6 The core questions at issue, therefore, relate to the acceptable mechanisms for implementing the MAR in domestic law and what mechanisms Parliament intended to use to accomplish this purpose. Determining which mechanisms are viable candidates requires examination of the objectives and minimum requirements of the WIPO Treaties. 12. A key purpose of the WIPO Treaties was to ensure adequate worldwide protection of

copyrighted works at a time when borderless digital means of dissemination are becoming increasingly popular.7 The WIPO Treaties were intended to adapt the international norms on copyright and related rights to facilitate the dissemination of protected material over the Internet. These new norms updated the Berne Convention tools to support new and evolving e-commerce marketplaces such as subscription-based (on-demand) delivery models, including music download and streaming services. The WIPO Treaties also updated and strengthened legal frameworks to enable rights holders to fight piracy, including on online file sharing sites such as Napster, Morpheus, KaZaA and other peer-to-peer (P2P) networks that enabled millions of users to share content files via the Internet.8

Ricketson Report at 37; de Beer Report at 18, unnumbered conclusion. Also see Ficsor Report at 3; von Lewinski Report at 44. 7 Ficsor, Copyright in the Digital Environment at 15-16; H.R. Rep. No. 105-551, pt. 1, at 9 (1998), also explaining that While such rapid dissemination of perfect copies will benefit both U.S. owners and consumers, it will unfortunately also facilitate pirates who aim to destroy the value of American intellectual property. 8 Ficsor, Copyright in the Digital Environment at 3-5; Note 18.04 to draft WPPT, reproduced in Ficsor at 4.146; von Lewinski Report at 26; H.R. Rep. No. 105-551, pt. 1, at 9 (1998); Menell, In Search of Copyrights Lost Ark at 2.

-613. The new rights of making available mandated by the WIPO Treaties were intended to fill

the significant lacuna in the Convention umbrella which left significant and obvious gaps in substantive protection. A centerpiece of the WCT was the MAR, which was also tracked in the WPPT.9 14. One of the gaps was that the Berne right of communication to the public did not cover

all types of works. This gap was rectified in the WCT by unifying the right of communication for all categories of works.10 15. Another gap was that the combination of Berne rights did not adequately protect against

the offering of interactive digital transmissions over the Internet. These transmissions scramble the traditional family of copy-related and non-copy related rights, which had previously been used to control the making available of content to the public, and do not respect the preestablished border between the copy-related and non-copy related rights.11 The Berne rights required modernization through a special treaty because, among other things: a) It was unclear whether the right of communication to the public covered ondemand communications of content.12

Ricketson and Ginsburg at 4.07, 4.09, 4.25-4.26, 12.43, 12.46-12.51; Ficsor, Copyright in the Digital Environment at 45, 56 (describing gaps in Berne rights resulting in there being no satisfactory and readily enforceable basis for the liability of those who make available to the public works and objects of related rights in such networks); Goldstein and Hugenholtz, International Copyright (Oxford UP, 2010) at 329 (Goldstein), recognizing the status of the second portion of Article 8 as one of the treatys main achievements, that for many countries has charted new territory by securing the right to control individualized, interactive uses of copyrighted works; Lindner and Shapiro, Copyright in the Information Society (Elgar, 2011) at 4, recognizing that it was necessary to adopt additional provisions beyond Berne in those cases where the scope of the existing provisions could no longer meet the challenges of protection; von Lewinski Report, 22, 24. 10 WIPO, Memorandum Prepared by the Chairman of the Committee of Experts, Notes on Article 10; see also Ricketson and Ginsburg at 12.01, 12.04-12.06. Article 10 of the WCT reads as follows: 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. 11 WIPO, Guide to the Copyright and Related Rights Treaties Administered by WIPO, at 209 (WIPO Guide); Ficsor, Copyright in the Digital Environment at 45-52; Reinbothe and von Lewinski at 106; Ricketson and Ginsburg at 12.51; Goldstein at 328; Jane C. Ginsburg, Recent Developments in U.S. Copyright LawPart II, Caselaw: Exclusive Rights on the Ebb?, Revue Internationale du Droit dAuteur (October 2008), at 12, 27. 12 Rogers at 43, citing Ricketson and Ginsburg at 12.48 (also see 12.57); Ficsor Report at p. 6; von Lewinski Report at 37; Reinbothe and von Lewinski at 1045; Goldstein at 318, 328-29; WIPO Guide at 209-11.

-7b) The distribution right covered by the WIPO Treaties did not cover interactive distribution through reproduction via transmissions or merely making available reproductions on an on-demand basis.13 The right of reproduction did not correspond to the extremely dynamic nature of Internet-type networks and it alone would not offer a satisfactory and readily enforceable basis for the liability of those who make available to the public works and objects of related rights in such networks.14

c)

16.

To address these gaps, it was agreed that the MAR should be defined in a technology-

neutral way with an eye to the unpredictability of future developments involving the Internet. It was to cover making available or providing access to copyrighted content in any form, including streams and downloads. Moreover, the right for each form of making available, whether for streams, downloads or otherwise, had to cover the interactive nature of digital transmissions. Specifically, the right had to be broad enough to enable right holders to control access to streams, downloads, and other hybrid or future forms of consumption by members of the public from different places and at different times.15 To be effective, it had to cover the offering of content to the public, not simply the numerous disparate transmissions that result from such an offer.16 17. The experts in this proceeding have confirmed these requirements. For example: a) Dr. Ficsor described the activities the MAR must cover as follows:

[A]n exclusive right in order to control the decisive act of uploading and making accessible for interactive use of protected works and objects of related rights on the Internet irrespective of the nature/purpose of the transmissions that may take place in the course of such use. The relevant provisions of the WCT and the WPPT were adopted by the 1996 Diplomatic Conference on the basis of a unanimous understanding that the making available right is applicable both where the resulting interactive use takes the form of transmissions only allowing perception of and where they may result in downloading of the works (performances and/or phonograms) thus made available.17

13

Ficsor, Copyright in the Digital Environment at 59-60; Ficsor Report at 6-8; Ficsor at 197, 204-5, 502-4; WIPO Guide at 209-11; Reinbothe and von Lewinski at 108; von Lewinski Report at 98; Ricketson and Ginsburg at 12.59; Goldstein at 330. 14 Ficsor, Copyright in the Digital Environment at 45; Ficsor at 496-99; WIPO Guide at 207-8; von Lewinski report at 101-3; Goldstein at 328-39. 15 WIPO Guide at 208-9; Ficsor Report at 5; Ficsor, Copyright in the Digital Environment at 59; Ficsor at 49699; von Lewinski Report at 26-28, 55; Goldstein at 328-39. 16 von Lewinski Report at 32-33, 51, 88; Ficsor Report at 4, 14; Reinbothe and von Lewinski at 108; Ricketson and Ginsburg at 12.58; Goldstein at 329. 17 Ficsor Report at 3.

-8b) Professor Ricketson described the activities the MAR must cover as follows:

At a first reading [of Article 8 of the WCT] there is no qualification as to the way in [which] this access may occur, for example, through downloading, streaming or otherwise, so long as the work is made available to the user at the time and place chosen by the user. The language here is technologically-neutral, with the emphasis being on the act of making available and the words may access indicating that the actual access to the work by a member of the public may follow at a later time.18 c) Professor von Lewinski described the activities the MAR must cover as follows:

[T]he Basic Proposal, which was the basis for the final treaty text, explained in its notes that it is irrelevant whether copies are available for the user or whether the work is simply made perceptible to and thus usable by, the user and considered as one possible scenario the possibility that the communication of a work result[s] in the reproduction of a copy at the recipient end.19 18. All experts also agree that the MAR can be implemented by including all of the covered

activities under the exclusive rights to communicate works and other subject matter to the public. Under the umbrella solution (more fully described below), the rights can also be implemented with the enactment of one or more exclusive rights. However, any implementation solution must fully cover the activities addressed under the WIPO Treaties.20 19. As Dr. Ficsor, Professor von Lewinski and others have confirmed, the dominant

international modes of implementing the MAR obligations under the WIPO Treaties has been to deploy a technologically neutral communication to the public right that extends to all acts of making available, or an exclusive right of making available, of both streams and downloads, including all of the elements of the transmission to the end users terminal, where it occurs, or an exclusive right of public performance that covers on-demand services and a digital distribution right.21 No country has satisfied its WIPO treaty obligations regarding the MARs in respect of downloads by the reproduction right. 22

18 19

Ricketson Report at 37. von Lewinski Report at 62 (also see 32). 20 Ricketson Report at 35-36, 39, 52; von Lewinski Report at 19, 94; Ficsor Report at 4-14. WIPO Guide at 208-9; Ficsor, Copyright in the Digital Environment at 60; de Beer Report at 12. 21 Ficsor at 493, 496; WIPO Guide at 209; Ricketson and Ginsburg at 12.57; Sterling at 471-72; Reinbothe and von Lewinski at 108; von Lewinski Report at 15, 44-56, 63. 22 von Lewinski Report at 102-3.

-920. The European Union Information Society Directive, for example, provides authors with

the exclusive right to authorise or prohibit 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 them from a place and at a time individually chosen by them. The recitals to the Directive confirm that the right is to be applied to all acts of making available and to associated transmissions, not simply to those acts of making available that result in an end user viewing a performance.23 21. Courts in Member States of the European Union, including the United Kingdom and

Ireland, and in Australia, Hong Kong and Japan have, consistent with the intended purpose of the WIPO Treaties, construed the right of communication to the public to include the making available of streams24 and downloads of copies of copyright content.25 The Court of Justice of

23

Information Society Directive, Art. 3(1), Recitals 23-25; von Lewinski Report at 51. The recitals read as follows: (23) This Directive should harmonise further the authors right of communication to the public. This right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates. This right should cover any such transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. This right should not cover any other acts. (24) The right to make available to the public subject-matter referred to in Article 3(2) should be understood as covering all acts of making available such subject-matter to members of the public not present at the place where the act of making available originates, and as not covering any other acts. (25) The legal uncertainty regarding the nature and the level of protection of acts of on-demand transmission of copyright works and subject-matter protected by related rights over networks should be overcome by providing for harmonised protection at Community level. It should be made clear that all rightholders recognised by this Directive should have an exclusive right to make available to the public copyright works or any other subject-matter by way of interactive on-demand transmissions. Such interactive on-demand transmissions are characterised by the fact that members of the public may access them from a place and at a time individually chosen by them. 24 ITV Broadcasting Ltd and others v TVCatchup Ltd, [2013] IP & T 607 (Case C-607/11) (CJEU) at 36-40 (holding that ITVs online television stream is covered by communication to the public, notwithstanding the fact that the recipients of the transmission were legally entitled to the televised version of the broadcast); Sociedad General de Autores y Editores de Espaa (SGAE) v Rafael Hoteles SA, [2007] IP & T 521, (Case C-306/05) (CJEU) at 30, 37-38, 42, 49, 51-52 (holding that a hotel that makes broadcasts available to individual hotel bedrooms by means of television sets which are fed a signal initially received by the hotel constitutes a communication to the public because it gave access to the protected work to its customers. In the absence of that intervention, its customers, although physically within that area, would not, in principle, be able to enjoy the broadcast work.) 25 Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others, [2012] EWHC 268 (Ch) at 69-71 (holding that users of The Pirate Bay bittorrent website who allowed sound recordings to be uploaded the swarm communicated sound recordings to the public by making them available); Polydor Ltd and others v Brown and others, [2006] IP & T 542 [2005] EWHC 3191 (Ch) at 6-9 (holding that a user of a P2P network communicated the copyright works merely by connecting his computer to the Internet and making the recordings available to the public for download); EMI Records Ltd and others v British Sky Broadcasting Ltd and others, [2013] EWHC 379 (Ch) at 39 (holding that users of various P2P websites communicate sound recordings by making them available to the public); Football Dataco Ltd and others v Sportradar GmbH and another, [2013] IP & T 191 (Case C-173/11) (CJEU) at 41-42, 45-48, 55, 58-61 (holding that uploading data from a database protected

- 10 the European Union has confirmed that the MAR applies irrespective of whether and how often the work is actually accessed.26 22. The United States took the path of implementing the MAR by using a public performance

right applicable to streams and a digital distribution right applicable to downloads. The U.S. distribution right has been applied to the online transmission of copies over the Internet and was intended by Congress to extend to making copies available for downloading without any requirement for transmitting copies.27 Japan chose to implement the MAR through a right to make a work transmittable.28 23. The contracting parties to the WIPO Treaties intended the MAR for works and the MAR

for neighbouring rights (including the rights of makers of sound recordings) to have an equally broad scope. The right was included in a separate Article from the right of communication to the public because under the WPPT, the MAR must be an exclusive right while the communication to the public right may be a right to collect equitable remuneration.29 B. 24. THE CANADIAN IMPLEMENTATION OF THE WIPO TREATIES It is beyond dispute that when Canada passed the Copyright Modernization Act, it

intended to fully implement the MARs required by the WIPO Treaties. The legislative history and methods used by the Government to enact the MARs make it clear that the vehicle for accomplishing this was through the explicit amendments in ss. 2.4(1.1), 15(1.1)(d) and 18(1.1)(a).

by a sui generis right onto a server from which others can access and display the content upon request constitutes making the data available to the public in the context of communication via the Internet); Alain Strowel, Peer-toPeer File sharing and Secondary Liability in Copyright Law (Elgar, 2009) at 57, summarizing decision in JASRAC v. MMO Japan Ltd., in which the Tokyo District Court held that the defendants service provides its users with an opportunity to exchange MP3 files and enables its users to freely send and receive MP3 files, thus infringing the plaintiffs exclusive right of making copyright works transmittable. 26 Sociedad General de Autores y Editores de Espaa (SGAE) v Rafael Hoteles SA, [2007] IP & T 521 (CJEU case C-306/05) at 43; also see Phonographic Performance (Ireland) Limited v Ireland and Attorney General, (2012) C162/10 at 20, 62, 67; Goldstein at 329. 27 Ficsor Report at 20; Ginsburg, Recent Developments at 37; von Lewinski Report at 97; U.S. Dept. of Commerce, Copyright Policy, Creativity, and Innovation in the Digital Economy (July 2013) (the Green Paper) at 14-16; Menell, In Search of Copyrights Lost Ark at 25. 28 Ficsor Report at 21, describing Copyright Act (Japan), Art. 23(1). 29 von Lewinski Report at 42-43.

- 11 25. There is no support whatsoever in the legislative history for the dubious proposition that

Parliament intended to implement the MAR (or part thereof) through the distribution, reproduction, and or the authorization rights. Nor is there any support for the equally dubious assertion that Parliament intended to implement the MARs for streams and downloads in different ways using different rights, even if that were possible under the WIPO Treaties, or in ways that would leave substantial gaps in protection for making available of works and sound recordings. 26. Canada became a signatory to the WIPO Treaties on December 22, 1997. In explaining

their rationale for passing the Copyright Modernization Act, both Parliament and the Government have consistently stated their intention to fully implement the WIPO Treaties, including the MAR, and to do so in ways that accord with the international practices and norms of our major trading partners, so as to enable Canadians to fully realize the potential of digital marketplaces for copyright content and to fight online piracy.30 The intention was to fully implement the MAR treaty obligations, including providing access to copies under the new making available rights.31 27. When introducing the Copyright Modernization Act in 2011, the Government stated its

core objectives for the new legislation: The Copyright Modernization Act provides copyright industries with a clear framework in which to invest in creative content, reach new markets, engage in new business models and combat infringement in a digital environment. Copyright owners are also often artists and creators. The Copyright Modernization Act promotes creativity, innovation and culture by introducing new rights and protections for artists and creators. It will help these people protect their work and ensure they are fairly compensated for their efforts. [] The WIPO Copyright Treaty and the Performances and Phonograms Treaty, collectively known as the WIPO Internet treaties, establish new rights and protections for authors, performers and producers. Canada signed the treaties in 1997. The proposed Bill will implement the associated rights and protections to pave the way for a future decision on

30

Preamble to Copyright Modernization Act; Copyright Modernization Act Backgrounder; Frequently Asked Questions; What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators; What We Heard During the 2009 Consultations; Explanatory Memorandum on Tabling the WCT before the House of Commons at 2; von Lewinski Report at 52. 31 Government of Canada, Balanced Copyright Glossary (explaining that the making available right is an exclusive right of copyright owners to authorize the communication of their work or other related subject matter, and describing the download service iTunes as an example of a service to which the right would apply).

- 12 ratification. All copyright owners will now have a making available right, which is an exclusive right to control the release of copyrighted material on the Internet. This will further clarify that the unauthorized sharing of copyrighted material over peerto-peer networks constitutes an infringement of copyright. Creators will also be given distribution rights to enable them to control the first sale of every copy of their work, which could be used, for example, to prevent the distribution of their work in advance of an official release date. Performers will be given moral rights to give them control over the integrity of their work and its association. The term of protection for their performances will be 50 years from the time of publication.32 [Emphasis added.] 28. The above passage makes it clear that: a) b) c) d) the Government considered the MAR a new right that had to be implemented through the proposed Copyright Modernization Act; the new MAR applied to the release of all copyrighted material, not merely performances; the purpose of the new right is to control the release of copyrighted material on the Internet; there is no indication that the existing reproduction or authorization rights or the new distribution right would play a role in implementing Canadas MAR obligations under the WIPO Treaties; and the MAR right was intended to apply to making available of copyright protected content using peer-to-peer networks and was to be used to combat online file sharing.

e)

29.

The preamble to the Copyright Modernization Act made it clear that Parliament was

seeking to implement the new rights through clear, predictable and fair rules, and via coordinated approaches, based on internationally recognized norms: Whereas the Copyright Act is an important marketplace framework law and cultural policy instrument that, through clear, predictable and fair rules, supports creativity and innovation and affects many sectors of the knowledge economy; Whereas advancements in and convergence of the information and communications technologies that link communities around the world present opportunities and challenges
32

Government of Canada, What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators; also see Copyright Modernization Act Backgrounder (New rights for Canadian creators: Canadian creators, performers, and artists will benefit from the full range of rights and protections in the WIPO Internet treaties, including an exclusive right to control how their copyrighted material is made available on the Internet.); Questions and Answers, The Copyright Modernization Act; Balanced Copyright Glossary.

- 13 that are global in scope for the creation and use of copyright works or other subjectmatter; Whereas in the current digital era copyright protection is enhanced when countries adopt coordinated approaches, based on internationally recognized norms; Whereas those norms are reflected in the World Intellectual Property Organization Copyright Treaty and the World Intellectual Property Organization Performances and Phonograms Treaty, adopted in Geneva in 1996; Whereas those norms are not wholly reflected in the Copyright Act;33 30. In tabling the WCT before Parliament on June 11, 2013, as part of the ratification

process, the Government explained that it was creating an exclusive right under the right of communication to the public to allow copyright owners to control the transmission of copyrighted works or the release of that material over the Internet without in any way limiting it to the transmission of streams or performances of works. It announced that Copyright Modernization Act amended the Copyright Act to provide for the rights and protections of the WIPO Copyright Treaty, including the following exclusive rights: Parties to the Treaty must provide three exclusive rights (beyond those explicitly required by the Berne Convention) for certain copyright owners, specifically: 1) the right of distribution (to enable them to control the first sale of every tangible copy of their work); 2) the right of rental (to enable them to authorize the commercial rental to the public of their original work or copies of their work in tangible form); and 3) the right of communication to the public, including the act of making available to the public (to enable them to control the transmission of copyrighted material via wire or wireless means or the release of that material on the internet).34 [Emphasis added.] 31. In introducing the Copyright Modernization Act, the Government explained the intent of

enacting new MARs for performers and makers of sound recordings in similar terms: Canadian creators, performers, and artists will benefit from the full range of rights and protections in the WIPO Internet treaties, including an exclusive right to control how their copyrighted material is made available on the Internet.35

33 34

Preamble to Copyright Modernization Act. Government of Canada, Explanatory Memorandum on the World Intellectual Property Organization Copyright Treaty at 2, 5. 35 Government of Canada, Copyright Modernization Act: Backgrounder.

- 14 32. Likewise, in tabling the WPPT before Parliament on June 11, 2013 as part of the

ratification process, the Government explained that the MARs would enable performers and makers of sound recordings to control the release of their phonogram [or performance] on the Internet.36 33. In Parliament, the intent of the Government with respect to technological neutrality was

expressed by Conservative members of Parliament describing Bill C-11: The first thing we heard [during the copyright consultations] was that Canadians thought that technological neutrality was an important guiding principle for copyright modernization. They emphasized that Canadas copyright regime must be able to accommodate technology that did not yet exist. They told us that any copyright reform must reflect the reality of an ever-evolving media and technological landscape. We responded.37 Right away we can see that the bill is technologically neutral. We were told time and time again by stakeholders across the spectrum that we need legislation that is not rendered obsolete by new advancements in technology, as the current act is. There have been three different attempts over the last 15 years, since 1997, to bring the legislation into the 21st century. This is what we are about to do with this legislation moving forward. The fact is technology is advancing all the time. It will be something that we will be addressing as we move forward as well.38 C. THE DEEMING CLAUSE IN S. 2.4(1.1) IMPLEMENTS A COMPREHENSIVE MAKING AVAILABLE RIGHT 34. The amendments made to the Act by the Copyright Modernization Act make it absolutely

clear that Parliament intended the MAR to be fully implemented as part of the communication to the public right. The Objectors assert that the MAR is limited to the making available of streams, but their conclusions are completely at odds with the object of the amendments using applicable principles of statutory interpretation. Principles of Interpretation 35. Statutory enactments embody legislative will. They supplement, modify or supersede

prior law. Tribunals are charged with interpreting and applying statutes in accordance with the

36

Government of Canada, Memorandum on the World Intellectual Property Organization Performances and Phonograms Treaty, at 4-5. 37 Hansard, Hon. Rob Moore, Conservative Member of Parliament for Fundy Royal, May 15, 2012. 38 Hansard, Hon. Ron Cannan, Conservative Member of Parliament for Kelowna Lake Country, May 15, 2012.

- 15 intent of the legislator. They do so by reviewing provisions in their entire context and in a grammatical and ordinary sense, harmoniously with the scheme of the act, the object of the act, and the intention of Parliament.39 36. The most significant element of this analysis is the determination of legislative intent.40

In this case, the object of creating the MAR was, in the governments own words, to grant an exclusive right to control the release of copyrighted material on the Internet in order to comply with Canadas WIPO Treaty obligations.41 37. Further, every enactment is to be deemed remedial, and is to be given such fair, large and

liberal construction and interpretation as best ensures the attainment of its objects. Thus, insofar as the language of the provision permits, interpretations that are consistent with or promote the legislative purpose should be adopted while interpretations that defeat or undermine the legislative purpose should be avoided.42 38. Thus a candidate right under the Act that does not effectively control the release of

copyrighted material on the Internet should be discarded in favour of an exclusive right that controls such activities.43 39. Moreover, as the amendments to the Act were specifically made to implement Canadas

treaty obligations under the WCT and WPPT, unless there is a showing of an unequivocal legislative intent to default on these important international obligations, the amendments to the Act should be read to fulfil these obligations.44 The Construction of the Amendments

39 40

Bell ExpressVu at 26-30, 62; CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339 at 9. Bell ExpressVu at 26-30, 62, R. v. Monney, [1999] 1 S.C.R. 652 at 26; ATCO Gas and Pipelines Ltd. v. Alberta, 2006 SCC 4 at 51. 41 ATCO at 51; Government Backgrounder; What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators; Questions and Answers, The Copyright Modernization Act. 42 Interpretation Act, R.S.C. 1985, c I-21, s. 12, Ontario (Labour) v. United Independent Operators Limited, 2011 ONCA 33 at 31. 43 Government Backgrounder, What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators; WCT, Art. 14(2), requiring contracting parties to provide effective action against any act of infringement of rights covered by this Treaty.

- 16 40. The Copyright Modernization Act implemented the new MAR for works through s.

2.4(1.1), a deeming clause that states the following: Communication to the public by telecommunication (1.1) For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.45 41. This is the only provision within the Copyright Modernization Act that expressly creates

an exclusive right using the term making available for works.46 42. The proper method of analyzing this amendment is to have full regard to the ordinary and

grammatical meaning of the terms communicate and make available with reference to context provided by the scheme of the act, the object of the act, and the intention of Parliament. 43. As observed by the Supreme Court in both the 2004 Tariff 22 case and the ESA case, the

ordinary and grammatical meaning of the term communicate suggests that a work has necessarily been communicated when, [a]t the end of the transmission, the end user has a musical work in his or her possession that was not there before. In particular, the ordinary and grammatical meaning of communicate connotes the passing of information from one person to another.47 44. The question in dispute in ESA was whether the historical context of the term

communicate in light of the Berne Convention and the Canada-U.S. Free Trade Agreement justified a narrower construction to capture only transmissions of performance-based activities.

44

Thberge at 6; Bishop at 473-75; SOCAN v. CAIP at 43; Rogers at 41-49; Reference re Broadcasting Regulatory Policy CRTC 2010-167 and Broadcasting Order CRTC 2010-168, 2012 SCC 68 at 74-5; R v. Hape, 2007 SCC 26 at 53. 45 Copyright Act, s. 2.4(1.1) 46 s. 2.4(1.1) also applies to other subject-matter, indicating the desire for an equivalently broad treatment of works and sound recordings wherever the word communication appears in the Act. See s. 15(1.1)(d) and 18(1.1)(a) creating an MAR for sound recordings and sound recordings of a performers performance. 47 ESA at 29-30, 72-74; SOCAN v. CAIP at 45; Canadian Wireless Telecommunications Assn. v. Society of Composers, Authors and Music Publishers of Canada, 2008 FCA 6 at 19-20 (CWTA v. SOCAN).

- 17 In light of this special context, five members of the Supreme Court concluded that Parliament did intend communicate to carry a narrower meaning than the dictionary definition.48 45. The enactment of the Copyright Modernization Act to control making content available

via the s. 2.4(1.1) deeming clause shows a clear intent to expand the meaning of the term communicate to encompass all present and future means of making available, just as the 1988 Canada-U.S. Free Trade Agreement Amendment Act transformed the technologically-specific s. 3(1)(f) term radio-communication into the comprehensive term telecommunication, capturing any transmission of signs, signals, writing, images or sounds or intelligence of any nature by wire, radio, visual, optical or other electromagnetic system.49 46. In assessing the impact of the deeming clause, it is crucial to understand that it expands

the term communicate beyond its ordinary meaning. As the Supreme Court held in an analysis of the dictionary definition of communication in the 2004 Tariff 22 case, the term presupposes a sender and a receiver of what is transmitted. In other words, it requires a passing of thoughts, ideas, words or information from one person to another. The requirement of a completed transmission is reinforced by the use in s. 3(1)(f) of the condition by telecommunication, which is defined in s. 2 of the Act to mean any transmission of signs, signals, writing, images or sounds or intelligence of any nature by wire, radio, visual, optical or other electromagnetic system.50 47. No dictionary definition considers a preparatory act the making available of content

to communicate that content in and of itself. As the Canadian Oxford Dictionary makes clear, the ordinary and grammatical meaning presupposes the successful transmission or conveyance of information from one person to another: communicate 1 tr. a. transmit or pass on (information) by speaking, writing or other means. b transmit (heat, motion, etc.). c pass on (an infectious illness). d impart (feelings etc.) non-verbally 2 intr. succeed in conveying information, evoking understanding, etc. 3 intr. share a feeling or understanding; relate socially.

48 49

ESA at 31-32. Act, s. 2 (telecommunication). 50 Copyright Act, s. 3(1)(f), s. 2 (telecommunication); SOCAN v. CAIP at 46, Goldman v. The Queen, [1980] 1 S.C.R. 976 at 995.

- 18 communication n. 1 a the act of communicating, esp. imparting news. b an instance of this. c the information etc. communicated. 2 a means of connecting different places, such as a door, passage, road, or railway. 3 social contact; routine exchange of information. 4 (in pl.) a the science and practice of transmitting information esp. by electronic or mechanical means. 51 48. By contrast, the making available of content requires only its offering, not its

completed transmission. The ordinary interpretation of available means something that is capable of being used or is at ones disposal.52 Making content available, in its grammatical and ordinary sense, is broad enough to include facilitating the dissemination of the content, including the dissemination of copies.53 49. Under Canadian law, giving the term its ordinary grammatical meaning, making

available is broad enough to include placing content in a shared folder and making that content accessible to others via the Internet. This is how the term has been interpreted under the Criminal Code in relation to the offense of making available child pornography under s. 163.1(3):54 ...the offence of making available child pornography under s. 163.1(3) is satisfied where an accused has downloaded child pornography or otherwise made child pornography available to others via a file sharing program over the internet. No other steps or actions to distribute it are required and the trial judge committed a substantive error of law when he concluded otherwise.55 50. This meaning of making available is confirmed by the sole requirement in s. 2.4(1.1)

that the work or other subject matter be made available in a way that allows a member of the

51 52

Oxford Canadian Dictionary, communicate, communication. Oxford Canadian Dictionary, available adj. 1 capable of being used; at ones disposal; obtainable. 53 See R. v. Spencer, 2011 SKCA 144 at 70 (leave granted at SCC) (in construing s. 163.1(3) of the Criminal Code, which makes it an offense to make available child pornography, the Court stated: The plain meaning of the text, in its grammatical and ordinary sense, is it is a crime to do anything which disseminates or facilitates the dissemination of child pornography.) 54 S. 163.1(3) reads as follows: Every person who transmits, makes available, distributes, sells, advertises, imports, exports or possesses for the purpose of transmission, making available, distribution, sale, advertising or exportation any child pornography is guilty of (a) an indictable offence and liable to imprisonment for a term not exceeding ten years and to a minimum punishment of imprisonment for a term of one year; or (b) an offence punishable on summary conviction and is liable to imprisonment for a term not exceeding two years less a day and to a minimum punishment of imprisonment for a term of six months. 55 R. v. Spencer, 2011 SKCA 144 at 78-81, 101-3 (leave granted at SCC); also see R v. Benson, 2012 SKCA 4 at 26-29; R. v. Villaroman, 2013 ABQB 279 at 41; R. v. Pelich, 2012 ONSC 3611 at 110; R. v. Smith, 2011 BCSC 1826 at 178, 182.

- 19 public to have access to it from a place and at a time individually chosen by that member of the public. 51. It is thus through the deeming clause in s. 2.4(1.1) that the s. 3(1)(f) term communicate

can fully accommodate the concept of making available of works required by the WCT. The result is a definition of communicate for the special purposes of the Copyright Act that is selfevidently broader than the ordinary meaning of the word. In essence, through the Copyright Modernization Act, Parliament transformed the word communicate to be a broad technologyneutral term reflecting Canadas WIPO Treaty obligations. The transformed s. 3(1)(f) is expanded to include preparatory acts that allow public access to a work, whether by streams or downloads. It also extends to the subsequent transmissions of these streams or downloads, should they occur.56 52. There is no restriction at all on the format or nature of the works. The activities of the

end user are also irrelevant.57 The Objectors interpretation of s. 2.4(1.1) that limits its ambit to making available of transmissions of streams impermissibly adds in restrictions which are not apparent from and are inconsistent with the neutral language of the clause itself.58 53. The Objectors completely fail to analyze the implications of the deeming provision in s.

2.4(1.1). Contrary to their submissions and diagrams, making available is not an illustrative example of communication whose limits are defined by the ESA case. Rather, the insertion of the terms as part of deeming mechanisms is a well-understood legislative vehicle that was used to deliberately expand the former technical meaning of communication to fulfil the Copyright Modernization Acts stated purpose of implementing the WIPO Treaty protections. 54. The effect of a deeming clause was set out in R. v. Verrette. In that case, the Supreme

Court explained that for the purposes of a statute, a deeming clause performs the purpose of expanding a word beyond its ordinary meaning to achieve a special purpose. This technique creates a statutory fiction that artificially imports into a word or an expression an additional meaning which it would not otherwise normally convey. Thus, for the purposes of the statute, the

56 57

Rogers at 30, 40 confirms that s. 3(1)(f) applies to these on-demand transmissions. See 84-88. 58 Rogers at 38.

- 20 deeming clause enlarges the word so that it shall be taken as if it were that thing although it is not or there is doubt as to whether it is .59 55. Thus, when Parliament added the MARs to the Act to transform the term communicate,

it shall be taken as if it were that thing although it is not or there is doubt as to whether it is. Whatever doubt there might be as to the ordinary meaning or former statutory meaning of the term communicate or communication, those terms now take on an expanded meaning to conform to the requirements set out in Article 8 of the WCT. 56. The intent and effect of the s. 2.4(1.1) deeming provision was to expand the meaning of

the term communicate to give it the well-understood scope it now has in international copyright law following the worldwide ratification of the WIPO Treaties. As Professor von Lewinski explains: the making available right covers the initial offer of content (including any subsequent new offer) from a server for access through the internet or other networks by members of the public as described in the relevant provisions, and it covers all of the elements of the transmission to the end users terminal, where it occurs.60 57. In reviewing the genesis of the MAR, Professors Ricketson and Ginsburg explain that, in

the international landscape, a communication over the Internet could encompass making available either a stream or a download: By the same token, one might assert that an on-demand digital communication, for example, from a website, should also be considered to the public. Any member of the public may access the website and respond to its offer to receive a communication (by streaming or downloading) of the work. The same analysis would apply to peer-to-peer file sharing: a computer user who has designated files on her hard drive as available for sharing invites any member of the public who has acquired the appropriate file-sharing program to initiate a communication of a copy of the designated file from the offerors computer to the acquirers.61 [Emphasis added.] The making available 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. The technological means of making available are irrelevant; the right

59 60

R. v. Verrette, [1978] 2 S.C.R. 838 at 845-846; Sero v. Canada, 2004 FCA 6 at 40. von Lewinski Report, 15. Also see 33-34, 44-45, 50 (describing the relation of the offer and the subsequent transmission), 46 (explaining how the MAR applies each time a work is newly offered to the public); footnote 6 (explaining that the term server includes, in addition to a server, any computer or other suitable device). 61 Ricketson and Ginsburg at 12.50.

- 21 is expressed in technologically neutral terms. [] Equally importantly, the right applies to the work; it is not limited to performances of the work. Thus it covers making the work available both as download and as a stream.62 [Emphasis added. Footnotes omitted.] 58. The s. 3(1)(f) term communicate the work to the public by telecommunication, once

read narrowly to conform to Parliaments intentions in implementing its Berne and CanadaUnited States Free Trade Agreement obligations, must now be read broadly to encompass any making available of the work or other subject-matter. The former meaning, historically restricted to performances of works, now applies to providing public access to works in all forms. 59. Parliaments desire for a comprehensive approach is also apparent in the neighbouring

rights provisions of the Copyright Act, where Parliament enacted a MAR for performers and makers of sound recordings in ss. 15(1.1)(d) and 18(1.1)(a). The amendment for makers of sound recordings in s. 18(1.1)(a) reads as follows: to make 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 and to communicate it to the public by telecommunication in that way;63 60. In making the amendments, Parliament made this new making available right in sound

recordings an exclusive right, leaving other communications to the public of sound recordings subject to the obligation to pay equitable remuneration.64 The scope of the MAR right under the

62 63

Ginsburg, Recent Developments, at 37; also see Goldstein & Hugenholtz at 329. The new right for performers is in near-identical terms, stating: to make a sound recording of it available to the public by telecommunication in a way that allows a member of the public to have access to the sound recording from a place and at a time individually chosen by that member of the public and to communicate the sound recording to the public by telecommunication in that way. 64 The WPPT, unlike the WCT, permits communications to the public, other than those communications covered by the exclusive MAR, to be a right to collect remuneration. Accordingly, the exclusive MAR for performers and producers of phonograms is set out Articles 10 and 14 of the WPPT and the right of communication to the public is set out in Article 15 of the WPPT. Article 10 states: Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them. Article 14 states: Producers of phonograms shall enjoy the exclusive right of authorizing the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them. See von Lewinski Report at 38, 42-43, explaining that the scope of the MAR under the WCT and WPPT was intended to be identical, but that the WPPT MAR was designed to preserve the ability of member countries to keep traditional broadcasting activities under a right of remuneration. Canada followed this structure by carving out the making available exclusive rights in ss. 15(1.1)(d) and 18(1.1)(d) from the communication right that is subject to the right to collect equitable remuneration under s. 19(1.1)(a).

- 22 WCT and WPPT, however, was intended to be identical, including that it applied to providing access to both streams and downloads and extended to any subsequent transmission thereof, should they occur.65 Parliament made this clear with language expressly covering both the act of making a sound recording available to the public and the subsequent act of communicating it (the stream or download of the sound recording) to the public by telecommunication. 66 61. It is also important to note that Professor Ricketsons report does not entertain the

question of whether the s. 2.4(1.1) amendment can be regarded as changing the Supreme Court interpretation of the communication right so as to include within it those interactive communications that result in a download of the work [being] made available as well as those that are streamed. Thus, the conclusions in the Ricketson Report do not in any way deny the possibility that the deeming clause fundamentally transformed the communication right into an MAR applying to streams, downloads, and combinations thereof, and other means now known or later developed to make works or other subject matter available to the public.67 D. 62. THE OBJECTORS THEORIES LEAVE SIGNIFICANT GAPS IN COVERAGE The Objectors agree that any form of implementation of the MAR using the umbrella

solution is only possible as long as or so long as the method of implementation fully complies with Canadas treaty obligations and leaves no gaps in protection. The Objectors expert Professor Ricketson repeats this qualification no less than 12 times in his report. He goes on to assert that the reproduction right would leave no gaps in protection if the MAR was not fully implemented in the communication to the public right.68 63. However, when arguing that the pre-existing reproduction right (or the reproduction and

authorization rights) fully complies with Canadas treaty obligations insofar as the rights must extend to controlling the release of copies over networks, the Objectors and their experts focus almost entirely on a single scenario where content is uploaded on a publicly available website,

65 66

von Lewinski Report at 38, 42-43. The deeming clause in s. 2.4(1.1) states that a communication of 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. Thus the wording at the end of new ss. 18(1.1)(a) and 15(1.1)(d) also imports the deeming provision in s. 2.4(1.1). 67 Ricketson Report at 46. 68 Ricketson Report at 48-49.

- 23 immediately making the content available to the public.69 They ask this Board to extrapolate that, merely because in this single instance the right of reproduction may play a role in making content available, there would not be any gaps in protection if the new MARs are restricted to making performances available. 64. In view of Parliaments clear intention to enact a full MAR, the Objectors burden is

much higher. They must demonstrate that, having regard to both currently available technologies and all conceivable future technologies to make content accessible over networks, including the Internet, the substitute rights they propose will be complete and robust enough to prevent any gaps in protection. The Objectors have utterly failed to demonstrate this. In fact, they havent even tried to do so. 65. In her report filed together with this submission, Professor von Lewinski identified

numerous gaps in protection for a country that purports to meet its obligations for making available of copies by relying solely on the reproduction right. The gaps are illustrated by the important differences between the reproduction right and the making available obligations in respect of copy-related activities. These differences include: a) Prohibited act: In contrast to the reproduction right, which covers the act of making a copy of a work or other subject matter in a material form, the MAR covers the rendering accessible of content to the public and as well as all steps in the transmission process by which a work or other subject matter is transmitted, if it is transmitted, and whether or not copies of the work or other subject matter are made during any part of these processes. Purpose: The reproduction right controls the fixation of a work, while the MAR controls the offering of access to the work as well as its transmission if the work is transmitted. Form: Reproduction constitutes a form of material or tangible exploitation, while making available occurs without any requirement to create copies in any material or tangible form. Timing: The reproduction right applies at the time a copy is made. The MAR applies at the time or times when the work is offered for access and when it is transmitted, if a transmission should occur.

b)

c)

d)

69

Ricketson Report at 49; de Beer Report at 33.

- 24 e) Frequency: A person may make no reproductions of a work, yet may make a work available to the public on one or more occasions. A person may make a single reproduction, yet not make the work available, or, in contrast, make it available numerous times. Who commits the act of infringement: The person who makes a reproduction (such as a person who uploads a file to a server) may not be the same person as the person who makes it available. Thus the rights holder may have no remedy against the person who makes content available to the public, even if there is a claim against the person making the reproduction. Territorial reach: The basis of the territorial reach of each right differs. The right of reproduction occurs where the act of fixation takes place. The location of the act of making available takes place at least at the location of the computer, device or server on which copyright content it is made available, the location of the users to whom access is provided including the locations to which transmissions may be sent or received.70 Exceptions: A different set of exceptions apply to the right of reproduction than to the MAR. Accordingly, a rights holder may have no right to control access or making available of a work by relying on the right of reproduction.71

f)

g)

h)

66.

Each of the above differences in protection demonstrates that the reproduction right is

insufficient to perform the role the WIPO Treaty Contracting Parties and Parliament intended for the MARs. In fact, the differences highlight the admonition made by Dr. Ficsor about the limitations of the reproduction right in controlling the release of content on the Internet, when he noted that the right of reproduction did not correspond to the extremely dynamic nature of Internet-type networks and that it alone would not offer a satisfactory and readily enforceable basis for the liability of those who make available to the public works and objects of related rights in such networks. As Professor von Lewinski concludes: Among such exclusive rights that may be candidates to satisfy the requirements of the making available right, the reproduction right is not (and was never envisaged by Contracting Parties as) a right that could be such a candidate.72

70

See 78 to 81 below. Also see EMI Records Ltd and others v British Sky Broadcasting Ltd and others, [2013] EWHC 379 (Ch) at 41; Football Association Premier League Ltd v British Sky Broadcasting Ltd and other companies, [2013] EWHC 2058 (Ch) (at 45-47); Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others, [2012] EWHC 268 (Ch) at 68-71; Sterling at 471-72 (explaining that the act of making available occurs (i) at the place where the content provider transmits material to a server site, or provides material for online transmission to an end user; (ii) at the server site; and (iii) at the reception point or points at which the content is available online is or may be accessed.); Ficsor at 508-9. 71 von Lewinski Report at 78-79. 72 Ficsor, Copyright in the Digital Environment at 45; Ficsor at 197; European Commission Follow-Up to the Green Paper, COM(96) 586 at 13; von Lewinski report at 19, 65-89, 109-15.

- 25 The limitations of the reproduction right were, in fact, one of the driving forces spurring the WIPO Treaties to include and Parliament to enact a MAR. i. The Reproduction Right Is Fundamentally Different in Nature from the Making Available Right and Would Leave Significant Gaps in Coverage 67. It is apparent that an interpretation advancing the reproduction right as a MAR to cover

providing access to copies would lead to significant gaps in coverage. This is because a reproduction and the making available of that reproduction (for downloading or streaming) are discrete and different activities, which are capable of taking place at different times, at different international locations and by different people. If the Objectors interpretation were to be adopted, the Canadian reproduction right simply would not capture all acts of making available of downloads, leaving clear and significant acts of making available unaddressed. 68. The right of reproduction is fundamentally different from the act of making available.

The right of reproduction is essentially concerned with making new copies in a material form. While the right is very broad and extends to digital environments, it does not cover the mere granting of access to content when a copy is not made.73 Yet the granting of access is the core attribute of the MARs. It is not hard to provide examples of why using the approach suggested by the Objectors would leave significant gaps in protection. 69. The Objectors claim that the reproduction right would apply to prevent any gaps as the

act of uploading to and downloading from a server would always be subject to the right of reproduction.74 This is not correct for several reasons. 70. One can also easily see that the act of reproduction when applied to uploading would not

cover the wider scope of the MAR. For example, it is easy to envision a person making a reproduction of a work or other subject-matter in a folder on a local hard drive or a cloud drive without attracting any liability for making the reproduction under the Act. The reproduction may be authorized under a licence which does not authorize or expressly prohibit a making available

73

Thberge v. Galerie dArt du Petit Champlain Inc., [2002] 2 S.C.R. 336 at 42-50 (confirming that reproduction involves the act of producing additional or new copies of the work in any material form and appearing to require multiplication in the form of a new derivation, reproduction or production of the original work). 74 Ricketson Report at 48.

- 26 of the content, or making a copy may be otherwise an exception to the right of reproduction under one of the exceptions introduced by the Copyright Modernization Act.75 71. If the person, or another person, later made the file accessible to the public such as by

joining a peer-to-peer file sharing service where local hard drive or cloud drive folders become accessible to a very broad public, or by changing permissions on a folder to allow others to share content, the content would be made available without there necessarily being an infringing reproduction by the person making the content available. This result would expressly undermine Parliaments clear goal of ensuring that the new MARs could be used to establish infringement against users of peer-to-peer networks.76 72. This scenario occurred in the Polydor case in the United Kingdom, where a father

attempted to raise the defence that while he had been the person who installed peer-to-peer software on his computer making stored content accessible to other peers, it was not he who was using his computer to download copyright materials, but rather his children. The Chancery Division denied the defence on the basis that infringement of the MAR requires only the installation of P2P software in conjunction with the placement of music files in a shared directory.77 73. As the Australian courts have found, while a user may save a file once to a hard drive

and possibly under a permitted exception a separate act of making available is engaged in each time the server or other device storing the copy is connected to the Internet. These separate acts of releasing content over the Internet would be beyond the scope of the initial act of making the server reproduction.78 The differences in scope of the right could affect both the liability of the

75

The Act has numerous exceptions that expressly permit making copies for one purpose, but does not condition the exception on the person who is entitled to the exception, or some other person, from not later making the content available to the public. See, e.g., s. 29 (fair dealing), 29.24 (backup copy), 29.4 (reproduction for instruction), 30.04 (work made available through Internet). See also von Lewinski Report 79 (noting that under German law, exceptions for reproduction do not apply to the MAR). 76 See Government of Canada, What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators, quoted at 27 above. 77 Polydor Ltd and others v Brown and others [2006] IP & T 542 at 7. 78 Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23 at 151-58, 328-29, 669; Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others, [2012] EWHC 268 (Ch) at 71 (adopting the Roadshow principle into UK law); Polydor at 6-9 (finding that connecting a computer to the internet, where the computer is running P2P software, and in which music files containing copies of the claimant's copyright works are placed in a shared directory, falls within the infringing act).

- 27 person making the copy available and the quantum of damages the person may be liable to pay. The right of reproduction may also be inapplicable because some acts of making available may take place after the expiry of the limitation period for claiming infringement of the reproduction right. 74. The Objectors assertions that the right of reproduction leaves no gaps also fails to take

into account the other myriad of possible ways in which an act of making content accessible over the internet might be covered by the MARs but not the right of reproduction. 75. For example, courts in other countries have recognized the right of making available can

apply to novel technological ways of releasing copyright content online that do not involve any acts of reproduction or streaming by the alleged infringer, such as by a pirate service provider that operates an indexing and/or linking web site that provides access to infringing copyright content.79 In the Newzbin case, the England and Wales High Court (Chancery Division) found that the sophisticated cataloguing and indexing of links to infringing content in a way that allowed premium customers to seamlessly download it was a making available of that content: The defendant has provided a service which, upon payment of a weekly subscription, enables its premium members to identify films of their choice using the Newzbin cataloguing and indexing system and then to download those films using the NZB facility, all in the way I have described in detail earlier in this judgment. This service is not remotely passive. Nor does it simply provide a link to a film of interest which is made available by a third party. To the contrary, the defendant has intervened in a highly material way to make the claimants films available to a new audience, that is to say its premium members. Furthermore it has done so by providing a sophisticated technical and editorial system which allows its premium members to download all the component messages of the film of their choice upon pressing a button, and so avoid days of (potentially futile) effort in seeking to gather those messages together for themselves. As

79

Football Association Premier League Ltd v British Sky Broadcasting Ltd and other companies, [2013] EWHC 2058 (Ch) at 38, 42 (holding that a website acting as an indexing and aggregation portal that points users to live feeds of copyright sports streams constitutes a communication as the works were made available to the public by electronic transmission); Twentieth Century Fox Film Corp and others v Newzbin Ltd, [2010] EWHC 608 (Ch) at 125 (holding that the defendants operation of a website index that allows users to search links to illegal content on third-party sites, thereby making them available to a new audience, was an infringement by communication); EMI Records Ltd and others v British Sky Broadcasting Ltd and others, [2013] EWHC 379 (Ch) at 45-49 (holding that the operators of a P2P indexing website, providing an organized directory of musical content which users can browse and select, make such content available and communicate copyright works to the public by electronic transmission); Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc [2011] EWHC 1981 at 113 (Ch); Ricketson and Ginsburg at 12.60-12.61 (connecting indirect acts of making available to WIPO Treaty obligations); Sterling at 468; USA v. ODwyer at printed pages 2-3, 6-7 (considering the cataloguing and collection of hyperlinks to infringing materials to be a making available under UK law).

- 28 a result, I have no doubt that the defendants premium members consider that Newzbin is making available to them the films in the Newzbin index.80 76. The Objectors may or may not agree that the MAR applies to one or more of these or

other possible ways of facilitating, releasing, or making content accessible over the internet and other electronic networks. However, as the right was intended to be a broad technologically neutral new right, the Objectors have the burden of establishing that all of these possible activities and variations thereof and new forms of releasing or making content accessible to the public could not possibly fall with the MAR or would all be covered by the reproduction or other candidate rights without leaving any gaps in protection. They have not even attempted to establish this. 77. One can also easily see that the act of reproduction when applied to downloading would

not cover the wider scope of the MAR. For example, the act of copying associated with downloading may be performed by a different person than the person who makes the file available. Accordingly, the reproduction right does not provide the required remedy against the uploader. Moreover, there may not even be any remedy against the downloader. For example, the download may occur outside of Canada and hence not be covered by the reproduction right.81 Or, the act of downloading may be performed by a person who may have the benefit of one or more exceptions in the Act that would permit copying for a specific purpose.82 78. The Objectors have also not addressed the possible gaps created because of the different

territorial reach of each of the rights. In his authoritative text, Dr. Ficsor describes territoriality as a critical consideration in enforcement of the MAR. He states that a theory in which interactive transmissions would be regarded to take place always and exclusively at the point from where the act of making available originates would fundamentally undermine the MAR because it: would contradict the concept of communication to the public (but also the concept of distribution to the public which may emerge as the object of an alternative right in the framework of the umbrella solution). Also, it could lead to catastrophic consequences, for example, in cases where copyright havens (without appropriate

80 81

Twentieth Century Fox Film Corp and others v Newzbin Ltd [2010] IP&T 1122 at 125. Sirius Canada Inc. v. CMRRA/SODRAC Inc., 2010 FCA 348 at 36-48. 82 Examples of these exceptions include works made available through the Internet at 30.04 the reproduction for instruction exception at s. 29.4, and a fair dealing exception under s. 29 or 29.1.

- 29 copyright protection) may be chosen for the act of making interactive transmission possible.83 79. The right of reproduction only applies in Canada if copies of an allegedly infringing work

are made in Canada. In the Sirius case, the Board and the Federal Court of Appeal agreed that offshore server reproductions are not covered under Canadian law under either the rights of reproduction or authorization.84 However, the territorial scope of the MARs under the Act would extend, inter alia, to the location where the server or computer that makes the content available is located and at the location of users to whom the content is made available including the locations to which transmissions are sent or received, whether inside or outside of Canada, at least where there is a real and substantial connection to these activities and Canada.85 80. In either scenario, reliance solely on the right of reproduction would produce gaps in the

territorial scope of protection. For example, where the server is located in Canada, making downloads accessible to persons outside of Canada as part of an on-demand service would be infringement under s. 2.4(1.1). However, if the MAR is limited to on-demand streams, the right would not extend to downloads made available as part of the service. As the reproduction right would not cover the making available of copies to persons outside of Canada, there would be a gap in protection.86 Further, as Professor von Lewinski pointed out in referring to a German case on point, the MAR could apply to making available of content from a foreign server that would fill a protection gap where the user in the domestic jurisdiction would not be liable under the reproduction right for downloading the content.87

83 84

Ficsor at 508-9. Sirius FCA at 36-48. 85 Under the real and substantial connection test, the conflicts of laws rule adopted by the Supreme Court of Canada to determine the territorial reach of the Copyright Act, each of these activities would fall within the MARs, even if part of the activity takes place outside of Canada. SOCAN v. CAIP at 57-78; Sirius FCA at 44; Disney Enterprises Inc. v. Click Enterprises Inc. (2006), 49 C.P.R. (4th) 87 at 14-31. As to the scope of the right, see also Sterling at 471-72 and Ficsor at 508-9. The courts in the European Union applying their targeting conflicts of laws rule have recognized that the MAR applies to both the locations of the server and where users are located even if outside of the place in which enforcement is sought. See EMI Records Ltd and others v British Sky Broadcasting Ltd and others, [2013] EWHC 379 (Ch) at 49-50; Football Association Premier League Ltd v British Sky Broadcasting Ltd and other companies, [2013] EWHC 2058 (Ch) at 45-47. 86 For the reasons given above, even the upload of the content to the Canadian server might not be an act of infringement of the MAR. Also, even if the upload of the content in Canada was subject to the reproduction right, the quantum of damages or the royalties the rights holder could recover might be different and the person who might be liable might also be different. 87 Von Lewinski report at 79.

- 30 81. Further, as US and Irish cases have pointed out, from an enforcement perspective, it is

much more efficient and desirable for a copyright holder to sue the site or service that is making available infringing content than it would be to pursue each downloader for infringement. One of the objectives of the MAR was to provide effective recourse against the person making content available to the public.88 82. Finally, the von Lewinski Report explains that the MAR under the WIPO Treaties

requires full coverage for the entire transmission made possible by the act of making available, should a transmission occur.89 While the reproduction right may apply at certain portions of the transmission process such as for caching, provided it is not subject to the new exception for temporary processes,90 the reproduction right does not cover the entire process of transmission in circumstances where copying of all or a substantial part is not involved.91 ii. The Authorization Right Is Different in Nature from the Making Available Right 83. Certain Objectors have made suggestions, none of which are explored in any detail, that

the Canadian authorization right applied to reproductions could fill the gap and satisfy the making available requirements of the WIPO Treaties.

88

In re: Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003) (Recognizing the impracticability of a copyright owner's suing a multitude of individual infringers (chasing individual consumers is time consuming and is a teaspoon solution to an ocean problem, Randal C. Picker, Copyright as Entry Policy: The Case of Digital Distribution, 47 Antitrust Bull. 423, 442 (2002)); Ficsor at 508-9; Ficsor, Copyright in the Digital Environment at 11, 15-16; Copyright Modernization Act: Frequently Asked Questions. Also, the evidentiary burdens of proof of infringement for the MAR and reproduction rights are different. For example, an end user distributing content using a peer-to-peer network would be liable for violating the MAR by a showing that a copyright-protected file is being publically made available on an Internet connected computer. No inquiry would need to be made as to whether the source file was reproduced in order to be shared and no evidence would need to be gathered to show that any download occurred in Canada. 89 von Lewinski Report at 15. 90 Copyright Act, s. 30.71; von Lewinski Report at 82. 91 Sirius FCA at 49-52, upholding Satellite Radio decision (Board Decision of April 8, 2009) at 83-103; von Lewinski Report at 15, 86-87; Ficsor at 197 (excerpting European Commission Follow-Up to the Green Paper, COM(96) 586, the full version of which deals both with the WIPO Treaty negotiations and the implementation of the MAR in the EU: Interested parties confirm that as far as the transmission of a protected work or related subject matter over the net involves reproductions, the reproduction right should ensure adequate protection. Both Member States and interested parties are, however, agreed that such protection would not be sufficient as the transmission of a work in a network environment on-demand will not necessarily imply acts of reproduction. In order to allow for interactive transborder services to be provided throughout the Single Market, it is considered necessary that rightholders should have available to them an additional right which enables them to adequately control on-demand transmissions of their works or other subject matter. [Emphasis added.])

- 31 84. Even a cursory look at this theory demonstrates that it is misconceived. The plain

language of Art. 8 (and of s. 2.4(1.1)) imposes strict liability on the provision of access to a work on an on-demand basis. No other conditions apply. However, while it is possible in certain situations that the uploading of a content file to a publicly available site may under the particular facts constitute an act of authorization, the significant differences in the two concepts make such generalizations precarious. 85. Case law in countries applying the MAR confirms that it does not matter whether a

person knows, or has reason to believe, that what he or she is doing is an infringement, because innocence or ignorance is no defence. The mere fact that the files were present and were made available is sufficient for the infringement to have been committed. Nothing else is required.92 86. By contrast, under Canadian law, the term authorize imposes requirements that the

WIPO Treaty signatories never intended, and which would undermine the MARs effectiveness. The meaning of authorize in s. 3(1) has been construed by the Supreme Court to require that a person sanction, approve and countenance the making of a copy before that person can be found liable. It is a question of fact that depends on the circumstances of each particular case.93 To authorize an act, the alleged infringer must grant or purport to grant, either expressly or by implication, the right to do the act complained of. An act is not authorized by somebody who merely enables, assists or even encourages another to do that act, but who does not purport to have any authority which he can grant to justify the doing of the act. The grantor must have some degree of actual or apparent right to control the actions of the grantee before he will be taken to have authorized the act.94 87. There is also a presumption that a person who authorizes an activity does so only so far

as it is in accordance with the law. This presumption may be rebutted if it is shown that certain relationships existed between the alleged authorizer and the actual infringer. Relationships that may support an inference of control are employer-employee, principal-agent, or joint ventures.

92 93

Polydor at 7; Roadshow at 157, 328-29, 666. CCH at 38 (Countenance in the context of authorizing copyright infringement is understood in its strongest dictionary meaning, namely, [g]ive approval to; sanction, permit; favour, encourage), 45 (describing the presumption). 94 CCH at 38; Vigneux v. Canadian Performing Rights Society Ltd., [1945] A.C. 108 at 123 (P.C.); Muzak Corp. v. CAPAC Ltd., [1953] 2 S.C.R. 182 at 191, 193; SOCAN v. CAIP at 124, 127.

- 32 Demonstrating such a relationship involves a case-by-case assessment of the relationship between the alleged infringer and the person alleged to authorize the infringement.95 88. The factors that are required to prove authorization are different from those relevant to

the MAR. Authorization raises questions that go well beyond mere access as described in the WIPO Treaties.96 89. Another gap arises if a download is not infringing. This is because it is not an

infringement merely to authorize or cause a person to do something that that person has a right to do.97 As Professor von Lewinski pointed out in referring to a German case, a downloader may have available an exception for infringement that the person making the content available may not.98 90. Another difficulty with the Objectors authorization theory lies within the inconsistency

with which their theory deals with the making available of downloads and streams. In essence, they suggest that Parliament somehow intended a primary right of s. 3(1)(f) communication to apply on a strict liability basis for making available of streams, but a different liability theory based on factors needed to prove authorization of the making available of downloads. There is absolutely no evidence that Parliament intended such a discriminatory approach, and the legislative history demonstrates without exception that Parliament made no such distinction whatsoever between making available of downloads or streams, consistently referring simply to the (undifferentiated) right of making available.

95

These factors, among others, cast doubt on Microsofts assertion at 54 of its factum that the 1999 Board decision in the Tariff 22 case means an existing exclusive right is already engaged by a person who makes musical works available for on demand access by download, and the owner of that existing right is already entitled to claim payment. The Boards decision considered a specific factual scenario in which a content owner posts a work to a publically available web site. The Board concluded that the act of posting constitutes authorization to communicate the work to the public at p. 46. It will be immediately appreciated that the Board was addressing a specific question of fact (see CCH at 38) and not stating a general principle applicable that all acts or possible acts of making available under the WIPO Treaties could be covered by the authorization right. One cannot extrapolate that because one possible scenario may be covered by the authorization right, that all acts would be. It also bears noting that the Board was addressing the authorization of a communication, not the authorization of a reproduction. The Board also did not consider possible defenses to the authorization theory including those raised above about the scope of the reproductions and authorization rights in addressing acts of making available. 96 CCH at 45; SOCAN v. CAIP at 122; von Lewinski Report at 122. 97 CAPAC v. CTV Television Network Ltd., [1968] S.C.R. 676 at 680. 98 von Lewinski Report at 120-25.

- 33 iii. The Distribution Right Applies only to Tangible Objects and Does Not Deal with the Issue of Exhaustion 91. The last candidate right proffered by the Objectors, again without any examination, is

the distribution right. At the international level, it is uncontroversial that a digital distribution right might satisfy the WIPO Treaty minima for MAR, provided that it deals with the transmission and the offer of access to digital copies and the issue of exhaustion.99 However, a distribution right applying solely to tangible objects and failing to deal with the question of exhaustion could not satisfy the WIPO Treaty minima.100 92. It is noteworthy that the new distribution right under the Copyright Modernization Act

appears under a distinct heading, and is limited to the sale or transfer of a work that is in the form of a tangible object, provided that ownership has never previously been transferred anywhere with the authorization of the copyright owner.101 93. Thus, despite the abstract claims of the Objectors with respect to the potential for the

distribution right to carry the weight of making available pursuant to the umbrella solution, the Copyright Modernization Act pointedly restricts the distribution right to tangible objects both for works and other subject-matter.102 The distribution right could not, accordingly, fulfil Canadas WIPO Treaty obligations. iv. Conclusion 94. It is impossible to imagine that Parliament would have intended the gaps in protection

described above to apply only to the making available of downloads and not of streams. The Objectors carry a heavy burden of demonstrating that Parliament would have intended this differential treatment, especially in view of the Supreme Courts clear admonishment that the Act should be construed in a clear, fair, predictable and principled way so that liability does not depend on the particular business model or technology chosen by the defendant.103

99

Ficsor at 4.132; Reinbothe and von Lewinski at 108; von Lewinski Report at 33-34; Information Society Directive, Art. 3(3) (ruling out exhaustion for the MAR); Ficsor, Copyright in the Digital Environment at 56 (describing the necessary conditions associated with making a digital distribution right appropriate for the MAR). 100 von Lewinski Report at 41. 101 Copyright Act, s. 3(1)(j). 102 For sound recordings, see s. 18(1.1)(b). 103 Rogers at 30, 40; SOCAN v. CAIP at 58-59, 76.

- 34 95. As SOCAN submitted in its initial written representations, technologies such as Rdio

have developed to the point of allowing users to select whether they wish to download or stream a given content file. Only a unified s. 2.4(1.1) MAR guarantees consistent legal treatment of such an activity in a technologically-neutral way. Artificially hiving off the right into two separate legal frameworks (made completely dependent on an end users election to stream or download or a service provider selecting one business model over another) could result in inconsistent legal consequences. There is no basis for concluding that Parliament intended to adopt such an inelegant and unfair solution, with the attendant gaps in protection for creating access to copies, particularly given the known problem of blurring that the WIPO Treaties sought to address.104 96. The Objectors admit that the candidate rights they propose to fortify the enfeebled MAR

which they claim Parliament intended to enact under s. 2.4(1.1) must fully comply with the treaties and leave no gaps, or as their expert Professor Ricketson says, leave no free space in protection. Yet, it is apparent that there would be a vast acreage of free space.

97.

In the sections above, Music Canada points out numerous readily apparent gaps.

However, it should be evident that these are merely examples of gaps to illustrate the problem with the Objectors approach. As technology evolves and as new forms of releasing content on the Internet or other networks emerge, others will certainly arise. The Objectors suggestion that the reproduction (and authorization) rights would always fully apply and leave no gaps when compared against the technologically neutral MAR must be tested against the certainty of this unpredictable and inexorable evolution. The purpose of the WIPO Treaties as a whole, and the MAR in particular, was to create legal rights that would be flexible enough to address technological changes in the digital realm. The Objectors have not provided any comfort that their theory satisfies this objective. 98. Moreover, the obvious inequality in the treatment of streams and downloads raises the

unanswered question as where the evidence lies that Parliament intended to splinter the MAR in such a way.

104

SOCAN written representations at 39, 44.

- 35 E. THE OBJECTORS HAVE MISCONSTRUED ESA AND ROGERS

Introduction 99. In the ESA case, the Supreme Court of Canada divided 5-4 over whether the historical s.

3(1)(f) communication to the public right could apply to a download of a video game over the Internet. The Objectors assert that ESA requires a reading down of the making available amendments. The Objectors are wrong. In fact, the reasons in the ESA and Rogers decisions of the Supreme Court lead to the exact opposite result. 100. As is fully explained below, the majority decision in ESA was based on the

application of key copyright interpretative principles including the legislative history of the communication to the public right, the requirement that the Act be construed in a technologically neutral manner, the special meaning of the term communicate in the then-existing language and context of the Act, and the historical dichotomy between the copy-related and non-copy related rights in the Act. Those principles of construction led to an interpretation of the communication right that did not include the transmission of durable copies to the public. 101. When these same principles of construction are applied to the new MARs, it is

apparent that the issue before the Board and the issue before the Supreme Court are distinguishable. Moreover, it is clear that the MAR which is now part of s. 3(1)(f) must be interpreted to include making available of streams and downloads and other means of providing access to works, as this is the only interpretation that coheres with the interpretive principles laid down by the Supreme Court, in particular because: a) This is the only interpretation that accords with the legislative history, which discloses Parliaments focus not on a copy- or performance-related activity, but a preparatory activity, the provision of public access to content, and transmissions thereof, if they occur; This is the only interpretation that deals with the language of the MAR in s. 2.4(1.1), the only new right in the Act associated with providing access to content for works; This is the only technologically and media neutral approach, in that all provision of access to content is encompassed under a single legal test; This is the only reading that is consistent with the decisions in ESA and Rogers which authoritatively construed s. 3(1)(f); and

b)

c) d)

- 36 e) This is the only reading that is consistent with the interpretation of the Supreme Court in its decision in Bishop v. Stevens.

The Legislative History Requires the MAR Be Broadly Construed to Include Downloads 102. In the past, Parliament treated reproduction-based rights and performance-based

rights as separate and distinct categories of rights. The former category targeted the making of durable copies of works. The latter targeted fleeting performances of works made before or delivered to a public audience.105 103. This construction of the Act, and in particular, the majoritys construction of the

right to communicate a work to the public in ESA, was based on the performance-based activities covered by Articles 11 and 11 bis of the Berne Convention which ss. 3(1) and 3(1)(f) were intended to implement. Through an examination of the Berne Convention and the amendments made as a result of the 1988 Canada-U.S. Free Trade Agreement, ESA explained that the term communicate had a special contextual meaning as a result of this legislative history, which did not extend to the transmission of copies.106 The ESA case did not construe or consider the effects of the WCT, as it was common ground that Canada had not yet implemented or ratified the WIPO Treaties. 104. By contrast, the WCT was a special agreement among Berne Convention

contracting parties that was intended to expand the rights set out in Berne.107 In particular, the new right of making available was intended to foster e-commerce in digital goods and to provide rights holders with tools to combat piracy, by creating a technologically neutral new access right that applied regardless of whether the material was made available via performance (stream) or a durable copy.108

105 106

Bishop at 477-79; ESA at 12-27. ESA at 21-24. 107 Rogers at 44. Article 1(1) of the WCT states that This Treaty is a special agreement within the meaning of Article 20 of the Berne Convention for the Protection of Literary and Artistic Works, as regards Contracting Parties that are countries of the Union established by that Convention. This Treaty shall not have any connection with treaties other than the Berne Convention, nor shall it prejudice any rights and obligations under any other treaties. Also see von Lewinski Report at 22-23. 108 See 16-19 above.

- 37 105. This legislative history of the MAR clearly distinguishes the issue before the

Board from the issue before the Supreme Court in ESA. The WIPO Treaties are a stark contrast to the legislative backdrop to the 1988 amendments, in regards to which the majority of the Supreme Court could see no evidence to transform the historical connection between communication and performance.109 106. The WIPO Treaties demonstrate a clear intention to create a new right that is not

tied or limited to the historical dichotomy between the copy-related rights and the non-copyrelated rights such as the communication right. The umbrella solution left open means of implementation that included a stand-alone MAR, an enhanced comprehensive communication right, or a performance-based right of communication to the public coupled with a digital distribution right that extended to making copies available for downloading.110 For countries like Canada which decided to implement the MARs as part of the communication rights, the inevitable consequence is that the communication right had to include or be transformed to include the making available of copies of content. 107. The ESA case shows that any construction of s. 2.4(1.1) and its effects on s.

3(1)(f) must take into account the legislative history of the new provisions. This history clearly demonstrates Canadas intention to fully implement the WIPO Treaties into Canadian law, and to do so using coordinated approaches, based on internationally recognized norms. The inescapable conclusion from the legislative history is that Parliament intended the rights of communication to the public to include the new technologically neutral MARs. The Supreme Court in ESA Was Considering the Word Communicate under Berne, Not the Phrase Making Available under the WIPO Treaties 108. In ESA, the Supreme Court was construing the term communicate simpliciter in

s. 3(1)(f). The Court did not have to, nor did it, construe the scope of the new making available language added to the Act. However, the interpretation of the new deeming provision in s. 2.4(1.1) is one of the central issues in this proceeding. Given that the effect of a deeming

109 110

ESA at 27. See 140-148.

- 38 provision is to expand upon the meaning or a previous interpretation of a term, it is apparent that the decision in ESA is distinguishable and cannot control the interpretation of this clause.111 109. Some of the Objectors make the specious argument that because the Copyright

Modernization Act came into force by Order in Council only after the release of the decision by the Supreme Court in ESA, Parliament must have intended to freeze the interpretation of the term communicate to the transmission of performances.112 110. This argument fails to take into account that, in ESA, the Supreme Court was only

construing the word communicate and not the words in the new MARs. 111. Moreover, this argument is incorrect because the meaning of words used in

legislation is fixed at the time of enactment and not at some later time.113 At the time the Copyright Modernization Act was passed by Parliament and given Royal Assent, Parliament would have understood that the term communicate encompassed the transmission of streams and downloads. This had been established by a series of decisions of the Board and three decisions of the Federal Court of Appeal, before being reversed by the Supreme Court after the Copyright Modernization Act was passed by Parliament and given Royal Assent.114 Accordingly, at the time of enactment, Parliament would have understood the term communicate to include transmissions of both streams and downloads. 112. The law prior to passage of the Copyright Modernization Act, however, limited

the communication right to completed transmissions of copyrighted content to the public. While

111 112

R. v. Verrette, [1978] 2 S.C.R. 838 at 845-846. See 53-55 above. Microsoft Submission at 24-26. The sequence of events was the following: First Reading of C-32 (Copyright Modernization Act): June 2, 2010; Second Reading of C-32: November 5, 2010; Reintroduction of Copyright Modernization Act as Bill C-11: September 9, 2011; Hearing of ESA Appeal: December 6, 2011; Passage by House of Commons, June 18, 2012; Royal Assent: June 29, 2012; ESA decision: July 12, 2012; Order in Council bringing s. 2.4(1.1) into force: November 7, 2012. 113 Perka v. The Queen, [1984] 2 S.C.R. 232 at 265-66; Felipa v. Canada (Minister of Citizenship and Immigration), 2011 FCA 272 at 70-71 (explaining that subsequent case law could not change Parliaments intent at the time of enactment); Ruth Sullivan, Sullivan on the Construction of Statutes (5th Ed.) (LexisNexis Canada Inc.: Toronto, 2008) at 146-47; Pierre-Andr Cot, Interpretation of Legislation in Canada (3rd Ed.) (Carswell: Scarborough, 2000) at 267. 114 CWTA v. SOCAN at 17-30; Bell Canada v. SOCAN, 2010 FCA 220 at 6-15; ESA v. SOCAN, 2010 FCA 221 at 13 (stating that in the Bell Canada case, this Court carefully reviewed the Boards decision and the applicable jurisprudence and concluded that the download of a music file or a stream did, in fact, constitute a communication of that musical work to the public by telecommunication and dismissed those applications for judicial review).

- 39 the scope of the right was broad enough to include on-demand communications, (as the Rogers case subsequently confirmed), there still was a requirement to establish that there had been actual transmissions. Mere availability of copyrighted content was not enough to trigger the right.115 Parliaments intention at the time of the enactment, therefore, was to broaden the term communicate to include the making available of streams and downloads to the public, without any requirement that the offer of streams or downloads result in actual transmissions. The Unified MAR Is Technology- and Media-Neutral and Must be Construed to Include Making Downloads Available 113. The Objectors rely on the principle of technological neutrality to argue the new

MAR cannot be interpreted to include both streams and downloads. Essentially, when subject to scrutiny, their argument is nothing more than that ESA construed the term communicate before the Acts amendments to exclude downloads by relying on the principle of technological neutrality and, therefore, after the amendments, the term has to be construed the same way based on this principle. This leap in logic is significantly flawed. 114. The principle of technological neutrality has a long history in our Act. In the

Apple Computer case, Justice Reed of the Federal Court stated that the Act should be interpreted to extend to technologies that were not or could not have been contemplated at the time of its drafting.116 In Robertson v. Thomson Corp, the Supreme Court applied this principle, stating that: Media neutrality is reflected in s. 3(1) of the Copyright Act which describes a right to produce or reproduce a work in any material form whatever. Media neutrality means that the Copyright Act should continue to apply in different media, including more technologically advanced ones. . . . [I]t exists to protect the rights of authors and others as technology evolves.117 115. In Rogers, the Supreme Court applied the principle of technological neutrality in

deciding that s. 3(1)(f) was broad enough to include on-demand communications. It stated:

115 116

SOCAN v. CAIP at 45-46; CWTA v. SOCAN at 20. Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (T.D.), affd [1988] 1 F.C. 673 (C.A.), affd [1990] 2 S.C.R. 209, cited with approval in Rogers at 39. 117 [2006] 2 S.C.R. 363 at 49.

- 40 Although the words in any material form whatever qualify the right to produce or reproduce the work in s. 3(1), the same principle should guide the application of the neutral wording of the right to communicate . . . to the public by telecommunication.118 116. In ESA, the majority reiterated that the principle of technological neutrality requires that

the Copyright Act apply equally between traditional and more technologically advanced forms of the same media.119 117. The principle of technological neutrality suggests strongly that the deeming clause in s.

2.4(1.1) should be given a technologically neutral interpretation that would enable it to be applied to both streams and downloads in different media, including more technologically advanced ones.120 This interpretation is especially warranted in light of the provisions legislative history, which made technological neutrality a cornerstone feature of the new right. 118. The Objectors point to several passages in ESA, essentially to argue that while the

principle of technological neutrality should apply to construing the new amendments, the principle should be applied to actually limit the technologically neutral scope of the new amendments to making available of streams and not downloads. 119. In the ESA case the majority narrowly construed the term communicate to exclude the

transmission of durable downloads. In the reasons for decision, the majority noted that a download was another way of delivering copies to customers, something that would not have been a communication to the public if the durable copy was delivered on cartridges or discs, and bought in a store or shipped by mail. It held that substitute delivery systems should compete on their merits, either both or neither should pay. It also pointed out that game publishers were already paying copyright owners reproduction royalties for all of these copying activities. It concluded that the principle of technological neutrality requires that, absent evidence of Parliamentary intent to the contrary, the Act should be construed in a way that avoids imposing an additional layer of protections and fees based solely on the method of delivery of the work to the end user.121

118 119

Rogers at 39. ESA at 5, 121. 120 Robertson at 49. 121 ESA at 4-6, 9.

- 41 120. The reliance on ESA to read down the construction of the MAR fails to take into account

the significant distinguishing features between what was in issue in ESA and what is in issue in this proceeding for several reasons. The Objectors also fail to properly apply the principle of technological neutrality to the new MARs. 121. First, the factual background in ESA was that the communication right could have

required the payment of royalties when a substitute delivery system (e-mail shipping) would not. However, the MAR is concerned with making access to a work available. It is not creating a substitute delivery system. It may cover transmissions, should they occur, but the essence of the right has a fundamentally different scope. 122. Second, the factual premise in ESA was that game publishers were already paying

copyright owners reproduction royalties for all of the copying activities that would have overlapped with the communication right that SOCAN had argued for. There is no evidence in this proceeding that royalties are being paid for the rights of reproduction that might be applicable in all of the contemplated tariffs in respect of the activities covered by the MARs. Additionally, because of the key differences in the rights of reproduction and making available, including the extensive differences between the two rights, one cannot assume that royalties covering the right of reproduction would also cover the much different right of making access to content available.122 123. Third, and more fundamentally, the majority expressly held that the principle of

technological neutrality was a principle of construction that applied absent evidence of Parliamentary intent to the contrary. In this proceeding it is clear that Parliament did not intend the principle of technological neutrality to apply to limit the scope of the MAR. On the contrary, Parliament intended to create a technologically broad and neutral new right that applied to any making available of content. As the preamble expressed it, Parliaments goals were to: (a) update the rights and protections of copyright owners to better address the challenges and opportunities of the Internet, so as to be in line with international standards[]

122

See 67-90.

- 42 (g) ensure that it remains technologically neutral123 establish rules that are technologically neutral, so they are flexible enough to evolve with changing technologies and the digital economy, while ensuring appropriate protection for both creators and users.124 The purpose of the new right is to control the release of copyrighted material on the Internet.125 [Emphasis added.] 124. Parliament intended to create a single, neutral, exclusive right for works to deal with the

problem of universal access on the Internet, rather than two different rules depending on whether the source copy was stored locally or remotely. From the users perspective, the Internet serves as a universal jukebox or universal library, with content equally accessible regardless of whether it is streamed from the cloud or played from a source copy on a hard drive. With fast connections and fast processing, from the user perspective, downloads and streams are essentially indistinguishable.126 125. Fourth, in applying the principle of technological neutrality, the Court was concerned that

the traditional balance between authors and users should be preserved in the digital environment.127 However, the Copyright Modernization Act was specifically intended to rebalance the Act to address the digital challenges. The Copyright Modernization Act was introduced only after considerable consultations with the public. The amendments to the Act were extensive and included substantial new exceptions from infringement as well as new rights, such as the MARs, to support e-commerce in digital goods, to enable rights holders to control the access to and release of copyright content on the Internet, and to help in anti-piracy

123 124

Copyright Modernization Act, preamble, (a). Government Backgrounder. 125 Government Backgrounder; What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators. 126 Novels may be read over the Internet or in an e-book file; TV series or music files can be rendered from a stream or a download with equal fidelity; downloaded files are often programmed to play as they are being transmitted. It should be anticipated that these kinds of fusion will only increase as time passes, and may indeed be replaced by different consumption technologies entirely. This is why, as discussed above, the MAR applies to a making available by any means, not the subsequent delivery or consumption technology. 127 ESA at 8.

- 43 proceedings.128 Given the clear rationale for the WIPO Treaties and the legislative objective to fully implement them using coordinated approaches, based on internationally recognized norms, the principle of technological neutrality should not be applied to cut down the MAR. Rather, it should be applied to give full effect to the intention of Parliament. ESA and Rogers Must Be Read Together 126. The Objectors submissions on the ESA case almost entirely overlook the

teachings of the Supreme Court in Rogers, a unanimous decision of the Court released on the same day as the ESA decision, which also provided authoritative guidance on the interpretation of s. 3(1)(f). 127. In Rogers, the Court refused to accede to the arguments of the appellants that the

communication right should exclude on-demand communications. The Court held that this approach did not result in principled copyright protection. It also rejected this approach because the existence of copyright protection would depend merely on the business model that the alleged infringer chooses to adopt rather than the underlying communication activity.129 128. Similarly, the submissions of the Objectors in this proceeding would result in

fragmented rights, the existence of which would ultimately depend on the vagaries of selected business models and on whether content is made available as a stream or a download, a distinction that has become blurred because of evolving technologies.130 The underlying communication activity addressed by the MAR amendments is a technologically neutral right of providing access to and controlling the release of copyright materials over the Internet. 129. In Rogers, the Court also held that the right of communication had evolved to

ensure its continued relevance in an evolving technological environment. The Court refused to read into the Act restrictions which are not apparent from and are even inconsistent with the neutral language of the Act itself.131

128

Preamble, Copyright Modernization Act; Government Backgrounder; What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators; Hansard, Hon. Rob Moore and Hon. Ron Cannan, May 15, 2012. 129 Rogers at 30, 40. 130 Ficsor Report at 8; von Lewinski Report at 50; SOCAN written representations at 39, 44. 131 Rogers at 38.

- 44 130. Here, the Objectors are seeking to limit the MAR as applied to copy-related

activities to effectively prevent it from being relevant to the evolving technological environment. Their arguments that the reproduction right can serve all of the purposes of the MAR are untenable, as demonstrated herein, and would prevent the courts from applying the intended new right to evolving technologies. Further, their arguments add restrictions to the interpretation of s. 2.4(1.1) which are not apparent from and are even inconsistent with the neutral language of the new subsection. 131. In Rogers, the Court found that that the WCT is a special agreement to provide

more expansive rights than conferred by the Berne Convention.132 However, the Objectors ignore this finding, arguing that the communication right has not changed as a result of the special agreement. 132. Last, the Objectors also ignore the holding of the Supreme Court in Rogers that

the WCT clarified that the MAR covers on-demand transmissions and transmissions in interactive systems.133 This quote is notable because of the use of the technologically neutral word transmission, a term which is not limited to the form in which the content is made available. The Unified MAR Is Consistent with Bishop v. Stevens 133. In arriving at its conclusion, the ESA majority also referred to Bishop v. Stevens,134 which

held that the right to communicate and the right to make a recording are distinct rights in theory and in practice. The Supreme Court noted in Bishop that while the rights in s. 3(1) are distinct, two distinct activities could trigger liability under two separate rights. In Bishop, the Court found that the making of an ephemeral copy of a musical work in order to effect a broadcast, and the actual broadcast of the work itself, were two separate acts that implicated two separate rights. The majority in ESA distinguished Bishop, stating that it does not stand for the proposition that a single activity (i.e., a download) can violate two separate rights at the same time.135

132 133

Rogers at 44. Rogers at 46-47, citing Ricketson and Ginsburg as well as the WIPO Intellectual Property Handbook. 134 [1990] 2 S.C.R. 467. 135 Bishop at 40-41.

- 45 134. It is crucial to recognize the important distinction between, in the ESA case, a single

activity not implicating two rights and, in the present matter, two activities, even if related in time, having the potential to implicate two rights. In ESA, the act of downloading a work from a server was analyzed as if it was as a single act. However, as described above, the acts of reproduction are separate and distinct in theory and in practice from the act of making a work available to the public. An act of reproduction may precede the act of making a work available, or it may follow such an act, or there may be no act of reproduction at all by the person making a work available to the public.136 The s. 2.4(1.1) Right Is Consistent with the Introductory Paragraph of s. 3(1) 135. In ESA, the majority held that the introductory paragraph of s. 3(1), which contains

references to the sole right to (i) produce or reproduce a work in any material form, (ii) to perform a work in public, or (iii) to publish an unpublished work, created an exhaustive definition of copyright, as the term means confines its scope. The Objectors have made much of this paragraph, suggesting in reliance on ESA that s. 3(1)(f) could not apply the MAR in s. 2.4(1.1) to a download, because s. 3(1)(f) remained a performance-based right.137 136. The Objectors overstate what the ESA majority actually said. The passage the Objectors

rely on stated the following: Nor is the communication right in s. 3(1)(f) a sui generis right in addition to the general rights described in s. 3(1). The introductory paragraph defines what constitutes copyright. It states that copyright means the sole right to produce or reproduce a work in any material form, to perform a work in public, or to publish an unpublished work. This definition of copyright is exhaustive, as the term means confines its scope. The paragraph concludes by stating that copyright includes several other rights, set out in subsections (a) through (i). As a result, the rights in the introductory paragraph provide the basic structure of copyright. The enumerated rights listed in the subsequent subparagraphs are simply illustrative.

136

Lewinski Report at 81-89; What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators; see 67-93 above. 137 See, e.g., Microsoft submissions at 27-29 (taking the view that rights akin to performance and reproduction must be kept separate).

- 46 At most, all the majority held was that s. 3(1)(f) is illustrative of the rights in the introductory paragraph. It did not say, nor could it have said, that s. 3(1)(f) could track only one of the rights described in the introductory paragraph.138 137. The scope of the MAR is illustrative of the acts mentioned in the introductory

paragraph to s. 3(1), in that it contains elements of performance (making transmissions of streams available) and publication (making copies of works available to the public). The latter right is of particular importance to the MAR, as it involves the offering of or making copies of a work available.139 There is thus no conflict at all with the ESA interpretation that the enumerated rights in s. 3(1) are illustrative of the rights mentioned in the introductory paragraph.140 F. THE EXPERT REPORTS OF THE OBJECTORS DO NOT IDENTIFY AN ADEQUATE ALTERNATIVE TO THE COMMUNICATION RIGHT The Reproduction Right Cannot Be Used to Comply with the WIPO Treaties 138. Professors Ricketson and de Beer suggest that the reproduction right might be used to

fulfill the MAR obligation as it relates to copies. It is apparent from even the single example of a making available considered by them (uploading a file to a publicly accessible server) that they have not taken into account the many scenarios in which gaps in protection would exist if the reproduction right was used to satisfy the treaty requirements for making available of copies. The examples provided above on this point show how faulty it is to generalize that merely because in a single example the reproduction right may apply, it necessarily will apply in all potential future scenarios of making available.

138

See ss. 3(a), (d), and (e), which are examples of illustrative rights that track more than one of the rights in the introductory paragraph of s. 3. 139 See Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al., [1940] SCR 218 (associating publish with the exclusive right of multiplying copies of a work); Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58 (publishing could only mean making public what had not previously been made public in the relevant territory); Copyright Agency Limited v State of New South Wales [2007] FCAFC 80 at 146, revd on other grounds in HCA (Publication occurs when a reproduction is put on offer to the public, where the person who makes the offer is prepared to supply on demand, whether or not the offer is advertised.) 140 It is important to note that the structure of ss. 15 and 18 do not include the same introductory paragraphs. Given that the scope of the three rights should be harmonious, any argument based on the preamble to s. 3(1) should not read down these specifically enacted amendments. A fortiori, the decision in ESA about the scope of s. 3(1)(f) should not be used to restrictively interpret the making available right for makers of sound recordings given the structural differences between s. 3(1)(f) and ss. 15(1.1)(d) and 18(1.1)(a).

- 47 139. Moreover, while Professors Ricketson and de Beer suggest that a country potentially

could properly implement the treaties in the manner they propose, neither of them, nor the Objectors, provides any good reasons to support the contention that Canada intended to and in fact did implement the WIPO Treaties in their proposed manner. 140. In fact, the umbrella solution did not contemplate that the reproduction right might be

used to fulfill the MAR obligation as it relates to copies. In their authoritative text, Professors Ricketson and Ginsburg make it clear that the candidate rights for implementing the MAR were the communication right or, if a country has a digital distribution right, through the distribution right. No other candidate rights are mentioned: The technological means of making available are irrelevant; article 8 of the WCT is expressed in technologically neutral terms. Juridically, member states may comply with the right either through local communication rights, or, for those countries who have applied the distribution right to temporary digital copies, through the right to distribute copies, as the United States urged during the drafting period.141 [Emphasis added.] 141. Similarly, the official WIPO Guide puts it as a contest between the communication right,

the digital distribution right and a sui generis general right of making available: In Article 8 of the WCT, the umbrella solution is applied in a specific way. Since the countries which preferred the right of communication to the public as a general option seemed to be more numerous, the Treaty, first, extends the applicability of the right of communication to all categories of works, and then clarifies that that right also covers transmissions in interactive systems described in a legal-characterization-free manner. [] [While] Contracting Parties are free to implement the obligation to grant exclusive right to authorize such making available to the public also through the application of a right other than the right of communication to the public or through the combination of different rights as long as the acts of such making available are fully covered by an exclusive right (with appropriate exceptions). By the other right, of course, first of all, the right of distribution was meant, but a general right of making available to the public might also be such an other right.142 [Emphasis added.]

141

Ricketson and Ginsburg at 12.59; WIPO, Understanding Copyright and Related Rights, at 10; Ficsor at 4.130, 4.135, 4.140; Reinbothe and von Lewinski at 108; von Lewinski Report at 97-104. 142 WIPO Guide at 209 (also see 208, stating that the international copyright community was faced with two basic options the application of the right of distribution or the application of the right of communication to the public and, of course, also with the possibility of combining these options somehow.)

- 48 142. It was also recognized that the distribution right had to have at least three attributes. First,

it applies to digital transmissions. Second, it extends to making available copies for distribution. Third, any act of distribution or making available cannot result in the exhaustion of the right.143 The Canadian distribution right fails in all three regards. 143. International experts have also dismissed the reproduction right as a viable mechanism

for implementation of the MAR as applied to making copies available to the public for downloading. In reviewing the WIPO Treaty negotiations, Dr. Ficsor provides a detailed explanation of the two candidate rights and explained why the reproduction right was considered insufficient. In short, the reproduction right is not the same as a right of providing access or making available in interactive environments: During the preparatory work, an agreement was reached in the WIPO committees that the transmission of works and objects of related rights on the Internet and in similar networks should be covered by an exclusive right of authorization of the owners of rights, with appropriate exceptions, of course. There was, however, no agreement on which one should be chosen of the two main candidates: the right of communication to the public and the right of distribution. The need for the application of one or both of those rights emerged because, although it was recognized that reproductions take place throughout any transmissions in digital networks, the application of the right of reproduction alone did not seem to be sufficient. It would not correspond to the extremely dynamic nature of Internet-type networks, and, furthermore, it alone would not offer a satisfactory and readily enforceable basis for the liability of those who make available to the public works and objects of related rights in such networks.144 144. In her report filed in this proceeding, Professor von Lewinski confirms that the

reproduction right was not a candidate right that could form part of the umbrella solution to satisfy the WIPO Treaties MAR obligations: Accordingly, among the candidate rights discussed for application to the act of making available were only rights that would cover the act of making available as a form of diffusion in the broadest sense, as opposed to the mere reproduction right. In fact, the reproduction right was mentioned in the Basic Proposal as applying to any reproductions taking place in the course of such making available, and as applying in addition to a right of making available. Likewise, discussions in the Committees of Experts and at the Diplomatic Conference confirm that the reproduction right was always considered as a
143

Ficsor at 235; Reinbothe and von Lewinski at 108; von Lewinski Report at 41-118; Information Society Directive, Art. 3(3) (ruling out exhaustion for the MAR); Ficsor, Copyright in the Digital Environment at 56. 144 Ficsor, Copyright in the Digital Environment at 44-45.

- 49 right applying to acts of reproduction in the context of internet transmission, and that any other, additional right or rights would have to cover the (different) act of making available. Therefore, I disagree with the expert opinions of J. de Beer and S. Ricketson, as far as they consider the reproduction right (including the right to authorize reproduction) to be a possible candidate right to implement the making available right as regards downloads...145 145. Professor von Lewinski also confirms that, in her comparative law research, she has not

come across any country that would have satisfied its WIPO treaty obligations regarding the MARs in respect of downloads or even the mere offer for access by the reproduction right. She also refers to a 2003 WIPO study reviewing the implementation of the WIPO Treaties in 39 Member States and demonstrating that while the digital distribution right is sometimes deployed under the umbrella solution, in no country the reproduction right has been used to cover making available.146 This is probative evidence in light of Professor Ricketsons report pointing out that subsequent conduct of Member States can be relevant to the interpretation of the WIPO Treaties.147 146. The report of Dr. Mihly Ficsor dated March 6, 2013 confirms the following important

points addressed above: a) b) It was the intention of the drafters of the WIPO Treaties to extend the exclusive MAR to both downloads and streams (pp. 3-4, 12-14); The modes of implementation for the MAR in member countries are (i) communication to the public that includes communications of streams and downloads, (ii) a digital distribution right, (iii) a combination of the two rights, or (iv) a free standing right of making available (pp. 5, 7, 10-11, 20); and The traditional concepts of distribution or communication to the public would require clarification to fulfil the objectives of the MAR (p. 6).148

c) 147.

Nowhere in the Ficsor report is it suggested that:

145 146

von Lewinski Report, answering question 6 (quote from 101-2). von Lewinski Report at 102-3. 147 Ricketson Report at 19-20. 148 Ficsor Report at 3-8, 10-14, 20-22.

- 50 a) b) c) 148. the reproduction right alone was considered an appropriate vehicle for implementation of the making available of copies part of the MAR; any country had implemented the making available obligation via the reproduction right; or a tangible copy distribution right would be appropriate for the MAR.

Rather, as the official WIPO Guide authored by Dr. Ficsor makes clear, the only other

potential alternatives or combination of alternatives to the communication right were the right of digital distribution and a general right of making available to the public.149 The WIPO Guide is an interpretation of the WIPO Treaties that should be considered authoritative under generally recognized principles of treaty interpretation.150 149. The suggestion of Cineplex LP at paragraph 51 of its submissions to the contrary is

misleading. Cineplex quotes a small portion of Dr. Ficsors treatise to suggest his endorsement of the reproduction right as a vehicle for the making available of downloads. When the relevant passage is seen in its full context, it is clear that Dr. Ficsor is actually talking about extending the WIPO Treaty distribution right in the U.S. style to encompass digital distributions, and not about a right of reproduction: As discussed above, the agreed statement added to Articles 6 and 7 (on the rights of distribution and rental)according to which as used in these Articles, the expressions copies and original and copies being subject to the right of distribution and the right of rental under the said Articles, refer exclusively to fixed copies that can be put into circulation as tangible objectsdoes not contradict the applicability of the right of distribution for digital interactive transmissions in the framework of the umbrella solution. The agreed statement only indicates the minimum level of protection, namely that the minimum obligation is to extend the right of distribution to the making available of tangible copies; there is, however, no obstacle under the WCT to extend the application of a right beyond the minimum scope and level prescribed therein (in this context, to extend the right of reproduction also to cover distribution through reproduction through transmission and to apply this broader right of distribution as part of the umbrella solution).151 150. Canada has clearly not taken this route given that its new s. 3(1)(j) distribution right is

limited to tangible copies, and has not been extended to digital distributions.

149 150

WIPO Guide at 209. See Ricketson Report at 20-25. 151 Cineplex LP submissions at 51; Ficsor at 499-500.

- 51 Specific Comments on Expert Reports of Professor Ricketson and Professor de Beer 151. Although the Objectors filed a pair of expert reports dealing with the notional availability

of the reproduction, authorization of a reproduction, and distribution rights as potentially fulfilling Canadas WIPO Treaty obligations, neither report goes so far as to examine the suitability of these other candidate rights against the actual backdrop of Canadian law in light of the numerous issues identified above. 152. Further, despite the importance both experts place on relevance of treaty implementation

by countries that have ratified the WIPO Treaties, neither expert has pointed to a single country out of the more than 90 nations that have ratified the WIPO Treaties that have implemented the treaties in the way they say it can theoretically be done.152 153. Professor Ricketsons report does not disagree with Dr. Ficsors conclusion that the MAR

applies to both the making available of streams and downloads. Professor Ricketson confirms that the purpose for which the work is made available is irrelevant, that is, whether the work is streamed or downloaded.153 154. Professor Ricketsons report also notes that the language in Article 8 is technology-

neutral, with the emphasis being on the act of making available and the words may access indicating that the actual access to the work by a member of the public may follow at a later time, but it is not necessary that such access occur.154

155.

The notes to the draft WCT confirm Professor Ricketsons opinions that the MAR covers

providing access to copyrighted content, with no requirement as to the form of eventual consumption chosen by the provider and/or the end user: The relevant act is the making available of the work by providing access to it. What counts is the initial act of making the work available, not the mere provision of
152

See www.wipo.int/treaties/en/ShowResults.jsp?country_id=ALL&start_year=ANY&end_year=ANY&search_what=C& treaty_id=16&treaty_id=20 (Accessed August 12, 2013); see von Lewinski Report at 102-3 (confirming that I have not come across any country that would have satisfied its WIPO treaty obligations regarding the making available rights in respect of downloads or even the mere offer for access by the reproduction right and citing to a WIPO report supporting her conclusion). 153 Ricketson Report, 9(b). 154 Ricketson Report, 37-38, 49.

- 52 server space, communications connections, or facilities for the carriage and routing of signals. It is irrelevant whether copies are available for the user or whether the work is simply made perceptible to, and thus usable by, the user.155 [Emphasis added.] 156. Professor Ginsburg has made the same point saying: The right covers offering the work to members of the public on an individualized basis; the public includes subsets of the general public, such as aficionados of tango music, or members of a particular performers fan club. As is clear from the formulation such a way that members of the public may access (emphasis supplied), the right is triggered when the public is invited to access, rather than when any member of the public in fact has accessed. Equally importantly, the right applies to the work; it is not limited to performances of the work. Thus it covers making the work available both as download and as a stream. Member States may comply with the right either through adopting a specific making available right, or through national laws providing for communication to the public, or, for those countries who have applied the distribution right to digital copies, through the right to distribute copies, as the United States urged during the drafting period. In adopting what came to be known as the umbrella solution, allowing member States to implement the making available right through any exclusive right under domestic law, the drafters opted for an approach of juridical as well as technological neutrality.156 [Footnotes omitted. Italics in original; bold emphasis added.] 157. Professor Ricketsons report does not specifically address whether the MAR also applies

to any transmissions of copyright content, should transmissions occur. His own authoritative text clarifies that making available embraces incipient as well as effected communications: [S]imply offering the work on an undiscriminating basis, so that any member of the general public may access the work, should come within the scope of the right. [] It is not necessary that the offer be accepted: making available embraces incipient as well as effected communications.157

155 156

Note 10.10 to draft WCT, reproduced in Ficsor at 4.144. Ginsburg, Recent Developments at 37; WIPO Guide at 208 (the treaties cover those acts which only consist of making the work accessible to the public [where] . . . members of the public still have to cause the system to make it actually available to them); Ricketson and Ginsburg at 12.58 (It is not necessary that the offer be accepted: making available embraces incipient as well as effected communications.), Lindner and Shapiro at 19 ([T]he offer of the content is sufficient for the making available right to come into play whether the user ultimately requests the transmission or not.); Reinbothe and von Lewinski at 108, 112; Sterling at 468; Green Paper at 15 (confirming that the right applies to the mere offering of copies to the public and that it is irrelevant whether copies are available for the user or whether the work is simply made perceptible to, and thus usable by, the user); von Lewinski Report, 26 157 Ricketson Report, 16(b); Ricketson and Ginsburg at 12.58; Ginsburg, Recent Developments, at 37.

- 53 158. This opinion is shared by Professor von Lewinski who in her report concluded: The making available right under the WCT and WPPT is an exclusive, technically neutral right. It applies as soon as a work, performance, or phonogram, which is stored on a server, is rendered accessible to the public through an internet or other network or connection that may be used by members of the public in such a way that they may access these works, performances, or phonograms, at the time and from the place chosen.158 In addition, where a transmission leading to an actual access by the user occurs, such transmission is also covered by the right of making available. 159. It is also noteworthy that while Professor Ricketson suggests in his report in this

proceeding that the reproduction right could serve as a vehicle for the making available of downloads, the only candidates offered in his own authoritative text are the communication right and the distribution right.159 160. Professor Ricketsons assumption that the MAR can always be satisfied through the use

of the reproduction right as applied to making available of copies did not fully canvass all of the potential gaps arising from the differences between these two important rights. Professor von Lewinski explained that the MAR covers a conceptually distinct activity from acts of reproduction: ...the making available rights under the Internet Treaties are different and distinct from the right of reproduction. Each of them covers different uses: the making available right covers the initial offer of content from a server for access through the internet or other networks by members of the public as described in the relevant provisions, and it covers all of the elements of the transmission to the end users terminal, where it occurs. The reproduction right covers the making of copies (fixations of works and other subject matter), be it on the server from which the content is made available, and, as the case may be, on servers during the transmission from there to the receiving end and in the storage medium or device of the receiver. The fact that both rights are covered by distinct articles in both treaties and are described differently shows that they are distinct and have their own scope of application...160 161. Professor Ricketson suggested that there would not be any gap in protection because the

uploading and downloading of a work from a website would always be covered by the right of

158 159

Von Lewinski report, answer to question 1. Ricketson and Ginsburg at 12.59 160 Von Lewinski report, answer to question 3.

- 54 reproduction.161 Professor von Lewinski pointed out that this opnion was based on assumptions that would not always be true. 162. In dealing with the gaps in the example given by Professor Ricketson about uploading to

a website, Professor von Lewinski stated: The reproduction right may only cover individual acts of making copies of the content. Such acts regularly occur during the act of making content available. Reproduction here is used as it is understood by the Supreme Court of Canada in Thberge. First, the upload/reproduction on the server constitutes a reproduction; however, the reproduction right only covers the reproduction, but not the act of rendering the content accessible to the public, and thus does not constitute an act of making available []. In this respect, I disagree with the expert opinions by Sam Ricketson and J. de Beer, as supported in the submissions by Apple. Therefore, it cannot be considered to cover the offer of contents in intangible form to members of the public as described in the relevant provisions of the WCT and WPPT. In fact, a reproduction made on a server does not automatically render the content accessible to the public; rather, it is only the connection to the internet which does so. Vice versa, the making available of content does not automatically require a new reproduction; for example, where a copy is stored on a computer of a user of a peer-topeer network, the user at one point of time has made one copy, but each time he turns on the computer again and connects his file to the internet, he performs separate acts of making available (and, if without the right owners authorization, multiple acts of infringement), without making a new upload/performing a new act of reproduction. The reproduction right does not cover those repeated acts of making available, so that a gap remains.162 163. In dealing with the gaps in the example given by Professor Ricketson about downloading

from website, Professor von Lewinski stated: [A] reproduction may occur at the end users storage device or medium; however, this individual act does not cover the other aspects of the making available right as explained above. Furthermore, an end user who makes a copy at the end of a transmission via the internet is not the person who makes it available, so that a mere reproduction right would only allow a claim against such end user, but would not be a basis for a claim regarding the act of making available. Therefore again, while I agree with Sam Ricketson that Article 8 WCT may be implemented in various ways so long as the scope of protection required by article 8 is accorded, I disagree with his expert opinion where it states that the reproduction right would cover making available of downloads.163

162 163

von Lewinski Report, 109-10. von Lewinski Report at 115.

- 55 164. Professor von Lewinski also indicated that the reproduction-based theory would result in

gaps with respect to persons responsible for making available, the territorial scope of protection, and coverage over the entire act of transmission.164 165. The Objectors also filed the report of Professor Jeremy de Beer, which comments on both

the international and domestic settings. 166. The report of Professor de Beer accepts that the MAR applies to both streams and

downloads. He concludes that countries must also somehow protect making available for copying or distribution, i.e. downloading, but suggests, uncontroversially, that there is flexibility in how countries can implement the MAR.165 167. Professor de Beer suggests that it is theoretically possible for the initial making available

of a work and the subsequent transmission of that work to be construed as one protected act. However, Professor de Beer does not cite any international authorities construing the reproduction right and making available to be one protected act.166 168. Professor de Beer also couches his opinion in equivocal terms, refusing to say that

existing Canadian law will apply to all acts of making available covered by the WIPO Treaties: If the work or subject matter is made available for downloading, the person making it available might be liable for reproducing, distributing or authorizing the reproduction or distribution. If the work or other subject matter is made available for streaming, the person might be liable for communication. The Objectors interpret Canadian copyright law to implement making available through a combination of communication and reproduction/distribution/authorization rights, which may apply depending on the nature of the access to the work, i.e. for streaming or for downloading.167 169. In particular, Professor de Beer does not explain how the s. 3(1) reproduction right,

distribution right or authorization right within the Act could serve to prohibit making available of

164 165

von Lewinski Report at 111-14. de Beer Report at 18-19. 166 de Beer Report at 23-24. 167 de Beer Report, 33, unnumbered conclusion.

- 56 a download under Canadian law in any or all of the possible ways in which this could occur. He also does not explain how the Canadian distribution right passed in the Copyright Modernization Act could apply to the digital setting, or how the strict CCH authorization test could fulfil the WIPO Treaty minima. There is thus no testable basis for his conclusion that the Objectors position is consistent and compliant with Canadas obligations under the WCT.168 170. As with the report filed by Professor Ricketson, Professor de Beers report suffers from

the fallacy that because a single act of release of content on the Internet may be covered or partially covered by the reproduction right, all acts of release will be. In reaching the conclusion that he did, Professor de Beer failed to analyze the differences between the MAR as required by the WIPO Treaties and the nature of the rights of reproduction, authorization and distribution under the Act. 171. It is also noteworthy that Professor de Beers previous writings suggest that the

communication right was used to implement Canadas WCT MAR obligations rather than any other right: The more legally, purposively and practically sound interpretation of the making available right in Canada is that it is not a separate right, but is subsumed within the communication right as interpreted by the Supreme Court. [] The practical effect, if not the explicitly stated intent, of the Supreme Courts rulings is that making available was already a protected right under the umbrella of communication, irrespective of implementation of the WIPO Internet Treaties. Copyright means the rights of publication, reproduction and performance; performance includes communication; and communication includes making available.169 172. His previous writings also treat legal protections controlling access to copyright works as

not falling within the reproduction right. He suggested that protecting access to a work through legal protection of technological measures was a case of paracopyright or a new layer of legal protection, above those already afforded by traditional copyrights and technological measures themselves, so much so that he questions whether they fall within the scope of Parliaments authority under the Copyrights clause. As only one example, he states conclusively that:

168 169

de Beer Report, unnumbered conclusion. de Beer, Copyright Royalty Stacking at 361-62.

- 57 Since it is not presently an infringement to access a copyrighted work, Bill C-60 appears to allow for the circumvention of pure access controls. However, this distinction may not have much practical significance because accessing a digital work usually involves making a copy, albeit ephemeral. This could effectively create a sui generis right of access. Although some argue this is a natural evolution of copyright, others say it constitutes an unprecedented expansion. Either way, the likelihood that the practical effect of this provision will be to create a right of access to digital materials is a departure from existing copyright principles. The debate is simply about the length of this leap.170 173. Such statements are at odds with Professor de Beers contention in his report that the

reproduction right is somehow contiguous with the new right of making available. In fact, his legal writings directly contradict his assertions and support the submissions made herein and by SOCAN. 174. Additionally, Professor de Beers own previous writings suggest that the Copyright

Modernization Act had the effect of overriding the Supreme Courts ruling in ESA to once again give SOCAN a MAR applying to downloads, in part because the reproduction right cannot fill the gaps or take the place of the MAR. The footnote qualifying the following discussion is particularly telling: One way to address the issue is, therefore, based on the plain language of subsection 2.4(1.1). Offering for sale a permanent download seems, on its face, to constitute making a work available 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. This interpretation would suggest that SOCANs rights to collect communication royalties are indeed reestablished. That, however, would also reintroduce all of the problems that a majority of the Supreme Court sought to avoid through its ruling in ESA. A contextual interpretation of subsection 2.4(1.1) would suggest that the phrase allows a member of the public to have access must be read with specific reference to the communication right that the clause defines. Making a work available in a way that allows access to on-demand streaming would, relying on the Supreme Courts reasoning in Rogers, implicate the communication right. Making a work available in a way that allows access to a permanent download would, relying on the Supreme Courts reasoning in ESA, implicate the reproduction right but not the communication right.101
101

One difficulty with that approach is the lack of statutory or principled grounds to suggest that merely making a work available might constitute

170

de Beer, Constitutional Jurisdiction over Paracopyright Laws at 89-90, 96, 107-8; de Beer, Locks & Levies, (2006), 84 Denver University Law Review 143 at 154, 168-69 (describing control of access in Canada as being paracopyright and noting Canadas strict authorization doctrine).

- 58 reproduction. An interpretation to that effect could set a very problematic precedent, so perhaps the issue of making available for reproduction is best left alone by adjudicators until the need for a firm resolution arises.171 175. Professor de Beers suggestion that the right of authorization could be used to satisfy the

WIPO Treaty obligations was criticized by Professor von Lewinski, who points out that his opinion does not account for the significant differences between the scope of the authorization right associated with reproductions and the MAR: I still disagree with J. de Beer, because any requirement for authorization discussed in these judgments only concerns the question of under what circumstances an authorization is an infringement. However, the judgments do not address the question that is relevant here, namely, for what act authorization has been given. The extracts of the cases show that authorization requires showing some acts by the person authorizing the act. For example, the CCH case given to me says: Authorize means to sanction, approve and countenance: Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., 1953 CanLII 47 (SCC), [1953] 2 S.C.R. 182, at p. 193; De Tervagne v. Belil (Town), 1993 CanLII 2960 (FC), [1993] 3 F.C. 227 (T.D.). Countenance in the context of authorizing copyright infringement must be understood in its strongest dictionary meaning, namely, [g]ive approval to; sanction, permit; favour, encourage: see The New Shorter Oxford English Dictionary (1993), vol. 1, at p. 526. Authorization is a question of fact that depends on the circumstances of each particular case and can be inferred from acts that are less than direct and positive, including a sufficient degree of indifference: CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812 (Ch. D.), at pp. 823-24. However, a person does not authorize infringement by authorizing the mere use of equipment that could be used to infringe copyright. Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law: Muzak, supra. This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement: Muzak, supra; De Tervagne, supra; see also J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs (4th ed. (loose-leaf)), at p. 21-104, and P. D. Hitchcock, Home Copying and Authorization (1983), 67 C.P.R. (2d) 17, at pp. 29-33. It is apparent from even the paragraph quoted above that there are factual requirements to prove authorization that are not required to make a work available to the public. The right of authorization can only refer to concrete acts that are designated in the law and that are infringed when done without authorization of the right owner. A general

171

Copyright Royalty Stacking at 363-64, 372.

- 59 right of authorization (i.e., in respect of any kind of use) would make obsolete the listing of concrete rights of authors and related rights owners in the law, since it would mean that beyond those rights, any other act is covered by a right (to authorize). Since, however, the relevant acts (offering for access and making available in form of downloads) are not fully covered by any of the rights mentioned in Question 6 above, also a right to authorize such acts cannot cover these acts. Therefore, for all these reasons, the gaps still remain.172 [Emphasis added.] 176. Moreover, Professor de Beers suggestion that the authorization right is sufficient to

address the challenges for which the MAR is supposed to apply appear to contradict his writings where he acknowledges that on conventional principles of Canadian copyright law the alleged authorizer must sanction, countenance and approve the infringement, a requirement that forms no part of the MAR.173 177. Professor de Beer also makes the general assertion that perfect harmonization with all

foreign approaches is impossible, as well as unnecessary, for Canadas treaty compliance. While it is a truism that perfect harmonization with all foreign approaches is not possible, this assertion cannot form an interpretive tool for evaluating implementation of the MAR, as it is contrary to the actual preamble to the Copyright Modernization Act, which stated Parliaments clear intent to effectively harmonize its approach with international norms: Whereas the Copyright Act is an important marketplace framework law and cultural policy instrument that, through clear, predictable and fair rules, supports creativity and innovation and affects many sectors of the knowledge economy; Whereas advancements in and convergence of the information and communications technologies that link communities around the world present opportunities and challenges that are global in scope for the creation and use of copyright works or other subjectmatter; Whereas in the current digital era copyright protection is enhanced when countries adopt coordinated approaches, based on internationally recognized norms; Whereas those norms are reflected in the World Intellectual Property Organization Copyright Treaty and the World Intellectual Property Organization Performances and Phonograms Treaty, adopted in Geneva in 1996;

172 173

von Lewinski Report at 122-25. de Beer, Legal Strategies to Profit from Peer Production (2008) 46 Can Bus LJ 269 at 274-75.

- 60 Whereas those norms are not wholly reflected in the Copyright Act;174 178. Further, Professor de Beers statements fail to consider the approach taken by the

Supreme Court to construing intellectual property statutes. In Thberge, the Supreme Court held that, in light of the globalization of the cultural industries, it is desirable, within the limits permitted by our own legislation, to harmonize our interpretation of intellectual property protection with other like-minded jurisdictions. This concept was repeated by the Supreme Court in several recent copyright decisions.175 Contrary to the argument of Professor de Beer, the desirability of interpreting the MAR to achieve international harmonization is particularly compelling here in light of Parliaments stated intent. G. 179. OTHER POLICY CONSIDERATIONS The Supreme Court has held repeatedly that the Act is an important instrument of cultural

policy and innovation. In 2002, the Court stated that one of its purposes is to preserve the balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator. Its opinion suggests that disrupting this balance risks imposing numerous negative effects on society.176 180. The Copyright Modernization Act specifically addresses both sides of the balance. As

Parliament created a series of new exceptions for users reflective of developing technologies, it also recognized that the core exclusive rights in the Act were insufficient to address the challenges of the Internet era. It recognized that coordinated approaches, based on internationally recognized norms were necessitated in the current digital era. Last, it called for clear, predictable and fair rules for copyright law.177 181. Neither the reproduction right nor the authorization right were modernized via the

Copyright Modernization Act. As shown above, they involve significantly different activities than the communication right domestically or the MAR internationally. They also contain significant gaps in coverage that either would make remedies difficult or impossible to achieve,

174 175

Preamble, Copyright Modernization Act. Thberge at 6; also see SOCAN v. CAIP at 63-78; Rogers at 44-49. 176 Thberge at 30-32; CCH at 10; SOCAN v. CAIP at 40, 88-89, 101, 114-16. 177 Preamble, Copyright Modernization Act.

- 61 or would require the fulfilment of conditions of proof not envisioned in association with the MAR. 182. A unified MAR under the communication right would be clear, predictable and fair by

applying a single comprehensive test for the making available of content online, regardless of how it may be eventually consumed. It would be responsive to further blurring in consumption technologies including user-directed consumption choices by avoiding any question of whether acts of making available related to those blurred consumption technologies are dealt with under the communication right, reproduction right, distribution right, or a combination thereof. It would deter attempts to game the system by severing the making of a reproduction from the act of making available, or by technological designs that raise uncertainties as to which right may apply. As such, the unified MAR under the communication right best achieves the object of Parliament in giving rights holders an exclusive right to control the release of copyrighted material on the Internet in order to comply with Canadas WIPO Treaty obligations.178 ALL OF WHICH IS RESPECTFULLY SUBMITTED.

McCarthy Ttrault LLP

Of counsel to Music Canada

12608234

178

Government Backgrounder, What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators.

- 62 -

PART IV TABLE OF AUTHORITIES TAB Authority Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003) 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22. 23. Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (T.D.), affd [1988] 1 F.C. 673 (C.A.), affd [1990] 2 S.C.R. 209 ATCO Gas and Pipelines Ltd. v. Alberta, 2006 SCC 4 Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58 Bell Canada v. SOCAN, 2010 FCA 220 Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559 Bishop v. Stevens, [1990] 2 S.C.R. 467 Canadian Wireless Telecommunications Association v. SOCAN, 2008 FCA 6 (F.C.A.) CAPAC v. CTV Television Network Ltd, [1968] S.C.R. 676 CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339 Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357 Copyright Agency Limited v State of New South Wales [2007] FCAFC 80 Disney Enterprises Inc. v. Click Enterprises Inc. (2006), 49 C.P.R. (4th) 87 Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others, [2012] EWHC 268 (Ch) EMI Records Ltd and others v British Sky Broadcasting Ltd and others, [2013] EWHC 379 (Ch) Entertainment Software Association v. SOCAN, 2010 FCA 221 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34 Felipa v. Canada (Minister of Citizenship and Immigration), 2011 FCA 272 Football Association Premier League Ltd v British Sky Broadcasting Ltd and other companies, [2013] EWHC 2058 (Ch) Football Dataco Ltd and others v Sportradar GmbH and another, [2013] IP & T 191 (Case C-173/11) (CJEU) ITV Broadcasting Ltd and others v TVCatchup Ltd, [2013] IP & T 607 (Case C-607/11) (CJEU) Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al., [1940] SCR 218 Muzak Corp. v. CAPAC Ltd., [1953] 2 S.C.R. 182

- 63 24. 25. 26. 27. 28. 29. 30. 31. 32. 33. 34. 35. 36. 37. 38. 39. 40. 41. 42. 43. 44. 45. 46. Ontario (Labour) v. United Independent Operators Limited, 2011 ONCA 33 Perka v. The Queen, [1984] 2 S.C.R. 232 Phonographic Performance (Ireland) Limited v Ireland and Attorney General, (2012) C-162/10 Polydor Ltd and others v Brown and others, [2006] IP & T 542 [2005] EWHC 3191 (Ch) R v. Benson, 2012 SKCA 4 R. v. Goldman, [1980] 1 S.C.R. 976 R v. Hape, 2007 SCC 26 R. v. McLaughlin [1980] 2 S.C.R. 331 R. v. Monney, [1999] 1 S.C.R. 652 R. v. Pelich, 2012 ONSC 3611 R. v. Smith, 2011 BCSC 1826 R. v. Spencer, 2011 SKCA 144 R. v. Verrette, [1978] 2 S.C.R. 838 at 845-846 R. v. Villaroman, 2013 ABQB 279 Re Broadcasting Order CRTC 2010-168, 2012 SCC 68 Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23 Robertson v. Thomson Corp., [2006] 2 S.C.R. 363 Rogers Communications Inc. v. SOCAN, 2012 SCC 35 Sero v. Canada, 2004 FCA 6 Sirius Canada Inc. v. CMRRA/SODRAC Inc., 2010 FCA 348, upholding Satellite Radio decision (Board Decision of April 8, 2009) Sociedad General de Autores y Editores de Espaa (SGAE) v Rafael Hoteles SA, [2007] IP & T 521, (Case C-306/05) (CJEU) Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, [2004] 2 S.C.R. 427 Tariff 22 Board Decision (1999)

- 64 47. 48. 49. 50. 51. Thberge v. Galerie dArt du Petit Champlain Inc., [2002] 2 S.C.R. 336 Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc [2011] EWHC 1981 Twentieth Century Fox Film Corp and others v Newzbin Ltd, [2010] EWHC 608 (Ch) USA v. ODwyer (Westminster Magistrates Court, Ruling of District Judge Purdy dated January 13, 2012) Vigneux v. Canadian Performing Right Society, [1945] A.C. 108 (P.C.)

Secondary Sources 52. 53. 54. 55. 56. 57. 58. 59. 60. 61. 62. 63. 64. 65. Canadian Government, Balanced Copyright Glossary Canadian Government, Copyright Modernization Act Backgrounder Canadian Government, Explanatory Memorandum on Tabling the WCT before the House of Commons Canadian Government, Frequently Asked Questions Canadian Government, What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators Canadian Government, What We Heard During the 2009 Consultations Pierre-Andr Cot, Interpretation of Legislation in Canada (3d) (Carswell: Scarborough, 2000) Jeremy de Beer, Constitutional Jurisdiction over Paracopyright Laws, in Michael Geists In the Public Interest Jeremy de Beer, Copyright Royalty Stacking, in Michael Geists The Copyright Pentalogy Jeremy de Beer, Legal Strategies to Profit from Peer Production (2008), 46 Can Bus LJ 269 Jeremy de Beer, Locks and Levies, (2006), 84 Denver University Law Review 143 European Commission, Follow-Up to the Green Paper, COM(96) 586 Mihly Ficsor, Copyright in the Digital Environment WIPO/CR/KRT/05/7 Mihly Ficsor, The Law of Copyright and the Internet (Oxford: Oxford University Press, 2002)

- 65 66. 67. 68. 69. 70. 71. 72. 73. 74. 75. 76. 77. 78. 79. 80. 81. Jane C. Ginsburg, Recent Developments in U.S. Copyright LawPart II, Caselaw: Exclusive Rights on the Ebb?, Revue Internationale du Droit dAuteur (October 2008) Paul Goldstein and Berndt Hugenholtz, International Copyright (Oxford UP, 2010) Hansard, May 15, 2013 (Speeches of MPs Ron Cannan and Rob Moore, CPC) Peter Menell, In Search of Copyrights Lost Ark, 59 J. Copyright Soc'y U.S.A. 1 (2011-2012) Oxford Canadian Dictionary, available, communicate, communication. Randal C. Picker, Copyright as Entry Policy: The Case of Digital Distribution, 47 Antitrust Bull 423, 442 (2002)) Jorg Reinbothe and Silke von Lewinski, The WIPO Treaties 1996 (Butterworths, 2002) Sam Ricketson and Jane Ginsburg, International Copyright and Neighbouring Rights (Oxford: Oxford University Press, 2nd Ed., 2006) J.A.L. Sterling, World Copyright Law, 3rd ed. (London: Sweet & Maxwell, 2008) Alain Strowel, Peer-to-Peer File Sharing and Secondary Liability in Copyright Law (Elgar, 2009) Ruth Sullivan, Sullivan on the Construction of Statutes (5th Ed.) (LexisNexis Canada Inc.: Toronto, 2008) U.S. Dept. of Commerce, Copyright Policy, Creativity, and Innovation in the Digital Economy (July 2013) U.S. House of Representatives Report No. 105-551, pt. 1 WIPO, Basic Notions of Copyright and Related Rights, WIPO/CR/GE/00/1 WIPO, Guide to the Copyright and Related Rights Treaties Administered by WIPO (Geneva: WIPO, 2003) WIPO, Memorandum Prepared by the Chairman of the Committee of Experts, CRNRIDC/4 (August 30, 1996)

- 66 -

Treaties and Statutes

TAB Authority 82. 83. 84. 85. 86. 87. 88. 89. 90. 91. Canada-U.S. Free Trade Agreement, December 10, 1987 Copyright Act, R.S.C. 1985, c. C-42 Copyright Modernization Act (Bill C-11, Royal Assent version) Copyright Modernization Act (Bill C-32, First Reading version) Criminal Code, R.S.C. 1985, c. C-46 Information Society Directive, 2001/29/ec Interpretation Act, R.S.C. 1985, c I-21 World Intellectual Property Organization, WIPO Copyright Treaty, adopted in Geneva on December 20, 1996 World Intellectual Property Organization, WIPO Performances and Phonograms Treaty, adopted in Geneva on December 20, 1996 World Trade Organization, Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)

DOCS 12684883