COPYRIGHT BOARD OF CANADA

SOCAN Tariff 22.A – The Making Available Amendment

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SUBMISSIONS OF MUSIC CANADAon the MAKING AVAILABLE AMENDMENT

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August 21, 2013 MCCARTHY TÉTRAULT LLPSuite 5300Toronto Dominion Bank TowerToronto ON M5K 1E6

Barry B. SookmanTel: (416) 601-7949Fax: (416) 868-0673bsookman@mccarthy.ca

Daniel G.C. GloverTel: (416) 601-8069Fax: (416) 868-0673dglover@mccarthy.ca

SOLICITORS FOR MUSIC CANADA

TABLE OF CONTENTS

PART I — OVERVIEW ............................................................................................................. 1

PART II — ISSUES..................................................................................................................... 3

PART III — STATEMENT OF ARGUMENT......................................................................... 5

A. WHAT IS THE SCOPE OF THE MAKING AVAILABLE RIGHT UNDER THE WIPO TREATIES? 5

B. 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 MakingAvailable 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 theIssue 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 makingavailable “certainly is not limited to a single SOCAN tariff, and probably notlimited to SOCAN itself… [but] will have some impact on the interpretation ofthe same right with respect to other works, performances and recordings,especially if the Board’s decision is judicially reviewed”.1

b) A decision will also have implications for licensing rights and enforcement rights.The Board must be alive to the numerous different contexts in which Parliamentintended the making available right (“MAR”) to apply, including future contextsthat may be difficult to anticipate at present.2

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 thepublic 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

1 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 Treatyhistory). 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 thefederal and provincial courts: Rogers Communications Inc. v. SOCAN, 2012 SCC 35 at ¶15.

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to have access to it [i.e. the “work or other subject matter”] from a place and at a timeindividually 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

Parliament’s 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) Reflects Parliament’s stated intent in passing the Copyright Modernization Act;

b) Makes sense of the specific “deeming provision” mechanism used to insert theMAR into the Act;

c) Covers all forms of making available so as to permit Canada to fully comply withCanada’s treaty obligations under the WCT; and

3 Copyright Act, s. 2.4(1.1). The Board should also consider what Parliament intended and achieved with theamendments to ss. 15(1.1)(d) and 18(1.1)(a) of the Act (together with s. 2.4(1.1), the “making availableamendments”). 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 amember of the public to have access to the sound recording from a place and at a time individually chosenby that member of the public and to communicate the sound recording to the public by telecommunicationin 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 tohave access to it from a place and at a time individually chosen by that member of the public and tocommunicate 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) at471-72 (“Sterling”); Sam Ricketson and Jane Ginsburg, International Copyright and Neighbouring Rights: TheBerne Convention and Beyond, 2nd ed. (New York: Oxford University Press, 2006) at 12-57 (“Ricketson andGinsburg”); Ficsor, The Law of Copyright and the Internet (Oxford UP, 2002) at 493, 496 (“Ficsor”).

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d) Is consistent with the principles of interpretation established by the SupremeCourt for construing the Act, including the principles laid down in the ESA andRogers 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

Canada’s 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) What is the scope of the MAR under the WIPO Treaties?

b) What was Parliament’s intention in passing the MAR provisions in the CopyrightModernization Act?

5 Submissions of the Networks, ¶11-12, 50, 80, 84; Apple Inc. and Apple Canada Inc., ¶8, 22-24, 45, 50-54; ESAand 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.

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c) What is the effect of the deeming provision in s. 2.4(1.1)?

d) Could other candidate MAR rights (such as the reproduction, authorization ordistribution rights) fully cover Canada’s WIPO Treaty obligations?

e) Does the decision in ESA require an interpretation of ss. 2.4(1.1) and 3(1)(f) thatprecludes its application to making available of copies, including downloads ofmusical 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 andtechnology-neutral, and to apply to the provision of access to content, withoutregard to how that content might eventually be consumed. Given the intent of theWIPO Treaties to cover any interactive content provision, the MAR also appliesto all elements of the transmission to the end user, should a transmission occur.

b) Parliament’s intent in passing the Copyright Modernization Act was to achievefull compliance with the WIPO Treaties by creating comprehensive MARs via thedeeming 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 patchworksolution used nowhere else in the world.

c) Deeming clauses artificially import into a word or an expression an additionalmeaning besides their normal meaning. In s. 2.4(1.1), Parliament intentionallygave the terms “communicate” an expanded meaning to make Canadian law fullycompliant with the WCT MAR obligations under the WIPO Treaties.

d) ESA and Rogers make it clear that the MAR in s. 3(1)(f) must be interpreted toinclude making available of streams and downloads and other means of providingaccess to works, as this is the only interpretation that coheres with the interpretiveprinciples laid down by the Supreme Court. This is:

(i) the only outcome that accords with the legislative history, which disclosesParliament’s focus not on a copy- or performance-related activity, but theprovision 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 copyrightworks;

(iii) the only technologically- and media-neutral outcome, in that all provisionof 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 Court’s decision inBishop v. Stevens.

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e) The right of reproduction is separate and distinct in theory and in practice fromthe MARs. It cannot be used as proposed by the Objectors to satisfy Canada’sWIPO Treaty obligations relating to the making available of downloads ofcopyrighted content.

PART III — STATEMENT OF ARGUMENT

A. WHAT IS THE SCOPE OF THE MAKING AVAILABLE RIGHT UNDER THE WIPOTREATIES?

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

6 Ricketson Report at ¶37; de Beer Report at ¶18, unnumbered conclusion. Also see Ficsor Report at 3; vonLewinski Report at ¶44.7 Ficsor, “Copyright in the Digital Environment” at ¶15-16; H.R. Rep. No. 105-551, pt. 1, at 9 (1998), alsoexplaining that “While such rapid dissemination of perfect copies will benefit both U.S. owners and consumers, itwill 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 Copyright’s Lost Ark”at 2.

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13. 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 pre-

established 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 “on-demand” communications of content.12

9 Ricketson and Ginsburg at 4.07, 4.09, 4.25-4.26, 12.43, 12.46-12.51; Ficsor, “Copyright in the DigitalEnvironment” at ¶45, 56 (describing gaps in Berne rights resulting in there being no “satisfactory and readilyenforceable basis for the liability of those who make available to the public works and objects of related rights insuch 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 treaty’s ‘main achievements,’ that for manycountries has charted new territory by securing the right to control individualized, interactive uses of copyrightedworks”; Lindner and Shapiro, Copyright in the Information Society (Elgar, 2011) at 4, recognizing that it wasnecessary to adopt additional provisions beyond Berne “in those cases where the scope of the existing provisionscould 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 alsoRicketson and Ginsburg at 12.01, 12.04-12.06. Article 10 of the WCT reads as follows: “Without prejudice to theprovisions 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 publicof their works, by wire or wireless means, including the making available to the public of their works in such a waythat 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 andGinsburg at 12.51; Goldstein at 328; Jane C. Ginsburg, “Recent Developments in U.S. Copyright Law—Part II,Caselaw: Exclusive Rights on the Ebb?”, Revue Internationale du Droit d’Auteur (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 LewinskiReport at ¶37; Reinbothe and von Lewinski at 1045; Goldstein at 318, 328-29; WIPO Guide at 209-11.

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b) The distribution right covered by the WIPO Treaties did not cover interactivedistribution through reproduction via transmissions or merely making availablereproductions on an on-demand basis.13

c) The right of reproduction did “not correspond to the extremely dynamic nature ofInternet-type networks” and “it alone would not offer a satisfactory and readilyenforceable basis for the liability of those who make available to the public worksand objects of related rights in such networks”.14

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 makingaccessible for interactive use of protected works and objects of related rights on theInternet irrespective of the nature/purpose of the transmissions that may take place in thecourse of such use. The relevant provisions of the WCT and the WPPT were adopted bythe 1996 Diplomatic Conference on the basis of a unanimous understanding that themaking available right is applicable both where the resulting interactive use takesthe form of transmissions only allowing perception of and where they may result indownloading of the works (performances and/or phonograms) thus madeavailable.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 Ginsburgat 12.59; Goldstein at 330.14 Ficsor, “Copyright in the Digital Environment” at ¶45; Ficsor at 496-99; WIPO Guide at 207-8; von Lewinskireport 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 496-99; 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 andGinsburg at 12.58; Goldstein at 329.17 Ficsor Report at 3.

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b) 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 orotherwise, so long as the work is made available to the user at the time and place chosenby the user. The language here is technologically-neutral, with the emphasis being on theact of “making available” and the words “may access” indicating that the actual access tothe 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 notesthat “it is irrelevant whether copies are available for the user or whether the work issimply made perceptible to and thus usable by, the user” and considered as one possiblescenario the possibility that the “communication of a work result[s] in the reproduction ofa 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 user’s 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 Ricketson Report at ¶37.19 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 vonLewinski at 108; von Lewinski Report at ¶15, 44-56, 63.22 von Lewinski Report at ¶102-3.

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20. 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 author’s right of communication to the public. This rightshould be understood in a broad sense covering all communication to the public not present at the placewhere the communication originates. This right should cover any such transmission or retransmission of awork to the public by wire or wireless means, including broadcasting. This right should not cover any otheracts.

(24) The right to make available to the public subject-matter referred to in Article 3(2) should beunderstood as covering all acts of making available such subject-matter to members of the public notpresent 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-demandtransmission of copyright works and subject-matter protected by related rights over networks should beovercome by providing for harmonised protection at Community level. It should be made clear that allrightholders recognised by this Directive should have an exclusive right to make available to the publiccopyright works or any other subject-matter by way of interactive on-demand transmissions. Suchinteractive on-demand transmissions are characterised by the fact that members of the public may accessthem 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 ITV’s online television stream is covered by “communication to the public,” notwithstanding the factthat the recipients of the transmission were legally entitled to the televised version of the broadcast); SociedadGeneral de Autores y Editores de España (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 bymeans of television sets which are fed a signal initially received by the hotel constitutes a “communication to thepublic” because it gave “access” to the protected work to its customers. In the absence of that intervention, itscustomers, 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 Brownand others, [2006] IP & T 542 [2005] EWHC 3191 (Ch) at ¶6-9 (holding that a user of a P2P networkcommunicated the copyright works merely by connecting his computer to the Internet and making the recordingsavailable 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 bymaking 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

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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. THE CANADIAN IMPLEMENTATION OF THE WIPO TREATIES

24. 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 constitutesmaking the data available to the public in the context of communication via the Internet); Alain Strowel, Peer-to-Peer File sharing and Secondary Liability in Copyright Law (Elgar, 2009) at 57, summarizing decision in JASRACv. MMO Japan Ltd., in which the Tokyo District Court held that “the defendant’s service provides its users with anopportunity to exchange MP3 files” and “enables its users to freely send and receive MP3 files”, thus infringing theplaintiff’s exclusive right of “making copyright works transmittable”.26 Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA, [2007] IP & T 521 (CJEU caseC-306/05) at ¶43; also see Phonographic Performance (Ireland) Limited v Ireland and Attorney General, (2012) C-162/10 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. ofCommerce, “Copyright Policy, Creativity, and Innovation in the Digital Economy” (July 2013) (the “GreenPaper”) at 14-16; Menell, “In Search of Copyright’s Lost Ark” at 25.28 Ficsor Report at 21, describing Copyright Act (Japan), Art. 23(1).29 von Lewinski Report at ¶42-43.

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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 frameworkin which to invest in creative content, reach new markets, engage in new business modelsand combat infringement in a digital environment. Copyright owners are also often artistsand creators. The Copyright Modernization Act promotes creativity, innovation andculture by introducing new rights and protections for artists and creators. It will helpthese people protect their work and ensure they are fairly compensated for their efforts.[…]

The WIPO Copyright Treaty and the Performances and Phonograms Treaty, collectivelyknown as the WIPO Internet treaties, establish new rights and protections for authors,performers and producers. Canada signed the treaties in 1997. The proposed Bill willimplement 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 AskedQuestions; “What the Copyright Modernization Act Means for Copyright Owners, Artists and Creators”; “What WeHeard During the 2009 Consultations”; Explanatory Memorandum on Tabling the WCT before the House ofCommons at 2; von Lewinski Report at ¶52.31 Government of Canada, “Balanced Copyright Glossary” (explaining that the “making available right” is anexclusive 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).

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ratification. All copyright owners will now have a “making available right”, which isan exclusive right to control the release of copyrighted material on the Internet. Thiswill further clarify that the unauthorized sharing of copyrighted material over peer-to-peer networks constitutes an infringement of copyright.

Creators will also be given “distribution rights” to enable them to control the first sale ofevery copy of their work, which could be used, for example, to prevent the distribution oftheir 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 ofprotection for their performances will be 50 years from the time of publication.32

[Emphasis added.]

28. The above passage makes it clear that:

a) the Government considered the MAR a new right that had to be implementedthrough the proposed Copyright Modernization Act;

b) the new MAR applied to the release of all “copyrighted material”, not merelyperformances;

c) the purpose of the new right is to “control the release of copyrighted material onthe Internet”;

d) there is no indication that the existing reproduction or authorization rights or thenew distribution right would play a role in implementing Canada’s MARobligations under the WIPO Treaties; and

e) the MAR right was intended to apply to making available of copyright protectedcontent using peer-to-peer networks and was to be used to combat online filesharing.

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 culturalpolicy instrument that, through clear, predictable and fair rules, supports creativity andinnovation and affects many sectors of the knowledge economy;

Whereas advancements in and convergence of the information and communicationstechnologies that link communities around the world present opportunities and challenges

32 Government of Canada, “What the Copyright Modernization Act Means for Copyright Owners, Artists andCreators”; also see Copyright Modernization Act — Backgrounder (“New rights for Canadian creators: Canadiancreators, performers, and artists will benefit from the full range of rights and protections in the WIPO Internettreaties, 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”.

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that are global in scope for the creation and use of copyright works or other subject-matter;

Whereas in the current digital era copyright protection is enhanced when countries adoptcoordinated approaches, based on internationally recognized norms;

Whereas those norms are reflected in the World Intellectual Property OrganizationCopyright Treaty and the World Intellectual Property Organization Performances andPhonograms 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 explicitlyrequired by the Berne Convention) for certain copyright owners, specifically: 1) theright of distribution (to enable them to control the first sale of every tangible copy oftheir work); 2) the right of rental (to enable them to authorize the commercial rental to thepublic of their original work or copies of their work in tangible form); and 3) the rightof 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 orwireless 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 andprotections in the WIPO Internet treaties, including an exclusive right to control howtheir copyrighted material is made available on the Internet.35

33 Preamble to Copyright Modernization Act.34 Government of Canada, “Explanatory Memorandum on the World Intellectual Property Organization CopyrightTreaty” at 2, 5.35 Government of Canada, “Copyright Modernization Act: Backgrounder”.

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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 thoughtthat technological neutrality was an important guiding principle for copyrightmodernization. They emphasized that Canada’s copyright regime must be able toaccommodate technology that did not yet exist. They told us that any copyright reformmust reflect the reality of an ever-evolving media and technological landscape. Weresponded.37

Right away we can see that the bill is technologically neutral. We were told time and timeagain by stakeholders across the spectrum that we need legislation that is not renderedobsolete by new advancements in technology, as the current act is. There have been threedifferent attempts over the last 15 years, since 1997, to bring the legislation into the 21stcentury. This is what we are about to do with this legislation moving forward. The fact istechnology is advancing all the time. It will be something that we will be addressing aswe 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 andPhonograms 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.

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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 government’s own words, to grant “an

exclusive right to control the release of copyrighted material on the Internet” in order to

comply with Canada’s 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 Canada’s

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 Bell ExpressVu at ¶26-30, 62; CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339 at ¶9.40 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, 2011ONCA 33 at ¶31.43 Government Backgrounder, “What the Copyright Modernization Act Means for Copyright Owners, Artists andCreators”; WCT, Art. 14(2), requiring contracting parties to provide “effective action against any act ofinfringement of rights covered by this Treaty”.

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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 thepublic by telecommunication includes making it available to the public bytelecommunication in a way that allows a member of the public to have access to it froma 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 Théberge at ¶6; Bishop at 473-75; SOCAN v. CAIP at ¶43; Rogers at ¶41-49; Reference re BroadcastingRegulatory 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 ofworks and sound recordings wherever the word “communication” appears in the Act. See s. 15(1.1)(d) and18(1.1)(a) creating an MAR for sound recordings and sound recordings of a performer’s performance.47 ESA at ¶29-30, 72-74; SOCAN v. CAIP at ¶45; Canadian Wireless Telecommunications Assn. v. Society ofComposers, Authors and Music Publishers of Canada, 2008 FCA 6 at ¶19-20 (“CWTA v. SOCAN”).

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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 othermeans. b transmit (heat, motion, etc.). c pass on (an infectious illness). d impart (feelingsetc.) non-verbally … 2 intr. succeed in conveying information, evoking understanding,etc. … 3 intr. share a feeling or understanding; relate socially. …

48 ESA at ¶31-32.49 Act, s. 2 (“telecommunication”).50 Copyright Act, s. 3(1)(f), s. 2 (“telecommunication”); SOCAN v. CAIP at ¶46, Goldman v. The Queen, [1980] 1S.C.R. 976 at 995.

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communication … n. 1 a the act of communicating, esp. imparting news. b an instanceof 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 ofinformation. 4 (in pl.) a the science and practice of transmitting information esp. byelectronic 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 one’s 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 wherean accused has downloaded child pornography or otherwise made child pornographyavailable to others via a file sharing program over the internet. No other steps or actionsto distribute it are required and the trial judge committed a substantive error of lawwhen 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 Oxford Canadian Dictionary, “communicate”, “communication”.52 Oxford Canadian Dictionary, “available” adj. … “1 capable of being used; at one’s 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, inits grammatical and ordinary sense, is it is a crime to do anything which disseminates or facilitates the disseminationof 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 exportationany child pornography is guilty of (a) an indictable offence and liable to imprisonment for a term not exceeding tenyears and to a minimum punishment of imprisonment for a term of one year; or (b) an offence punishable onsummary conviction and is liable to imprisonment for a term not exceeding two years less a day and to a minimumpunishment 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 BCSC1826 at ¶178, 182.

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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 self-

evidently broader than the ordinary meaning of the word. In essence, through the Copyright

Modernization Act, Parliament transformed the word “communicate” to be a broad technology-

neutral term reflecting Canada’s 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 Act’s 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 Rogers at ¶30, 40 confirms that s. 3(1)(f) applies to these on-demand transmissions.57 See ¶84-88.58 Rogers at ¶38.

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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 subsequentnew offer…) from a server for access through the internet or other networks by membersof the public as described in the relevant provisions, and it covers all of the elements ofthe transmission to the end user’s 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, forexample, from a website, should also be considered “to the public”. Any member of thepublic may access the website and respond to its offer to receive a communication (bystreaming or downloading) of the work. The same analysis would apply to peer-to-peerfile “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-sharingprogram to initiate a communication of a copy of the designated file from the offeror’scomputer to the acquirer’s.61 [Emphasis added.]

The making available right targets on-demand transmissions (whether by wire or wirelessmeans), for it makes clear that the members of the public may be separated both in spaceand in time. The technological means of ‘making available’ are irrelevant; the right

59 R. v. Verrette, [1978] 2 S.C.R. 838 at 845-846; Sero v. Canada, 2004 FCA 6 at ¶40.60 von Lewinski Report, ¶15. Also see ¶33-34, 44-45, 50 (describing the relation of the offer and the subsequenttransmission), 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.

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is expressed in technologically neutral terms. […] Equally importantly, the rightapplies to the “work”; it is not limited to “performances” of the work. Thus it coversmaking 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 Parliament’s intentions in implementing its Berne and Canada-

United 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. Parliament’s 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 ofthe public to have access to it from a place and at a time individually chosen by thatmember of the public and to communicate it to the public by telecommunication in thatway;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 Ginsburg, “Recent Developments”, at 37; also see Goldstein & Hugenholtz at 329.63 The new right for performers is in near-identical terms, stating: “to make a sound recording of it available to thepublic by telecommunication in a way that allows a member of the public to have access to the sound recordingfrom a place and at a time individually chosen by that member of the public and to communicate the soundrecording to the public by telecommunication in that way”.64 The WPPT, unlike the WCT, permits communications to the public, other than those communications covered bythe exclusive MAR, to be a right to collect remuneration. Accordingly, the exclusive MAR for performers andproducers of phonograms is set out Articles 10 and 14 of the WPPT and the right of communication to the public isset out in Article 15 of the WPPT. Article 10 states: “Performers shall enjoy the exclusive right of authorizing themaking available to the public of their performances fixed in phonograms, by wire or wireless means, in such a waythat members of the public may access them from a place and at a time individually chosen by them.” Article 14states: “Producers of phonograms shall enjoy the exclusive right of authorizing the making available to the public oftheir phonograms, by wire or wireless means, in such a way that members of the public may access them from aplace and at a time individually chosen by them.” See von Lewinski Report at ¶38, 42-43, explaining that the scopeof the MAR under the WCT and WPPT was intended to be identical, but that the WPPT MAR was designed topreserve 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).

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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 Ricketson’s 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. THE OBJECTORS’ THEORIES LEAVE SIGNIFICANT GAPS IN COVERAGE

62. 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 Canada’s 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 Canada’s 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 von Lewinski Report at ¶38, 42-43.66 The deeming clause in s. 2.4(1.1) states that a communication of “other subject-matter to the public bytelecommunication includes making it available to the public by telecommunication in a way that allows a memberof the public to have access to it from a place and at a time individually chosen by that member of the public”. Thusthe 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.

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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 Parliament’s 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 haven’t

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 ofmaking a copy of a work or other subject matter in a material form, the MARcovers the rendering accessible of content to the public and as well as all steps inthe transmission process by which a work or other subject matter is transmitted, ifit is transmitted, and whether or not copies of the work or other subject matter aremade during any part of these processes.

b) Purpose: The reproduction right controls the fixation of a work, while the MARcontrols the offering of access to the work as well as its transmission if the workis transmitted.

c) Form: Reproduction constitutes a form of material or tangible exploitation, whilemaking available occurs without any requirement to create copies in any materialor tangible form.

d) Timing: The reproduction right applies at the time a copy is made. The MARapplies at the time or times when the work is offered for access and when it istransmitted, if a transmission should occur.

69 Ricketson Report at ¶49; de Beer Report at ¶33.

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e) Frequency: A person may make no reproductions of a work, yet may make awork available to the public on one or more occasions. A person may make asingle reproduction, yet not make the work available, or, in contrast, make itavailable numerous times.

f) 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 asthe person who makes it available. Thus the rights holder may have no remedyagainst the person who makes content available to the public, even if there is aclaim against the person making the reproduction.

g) Territorial reach: The basis of the territorial reach of each right differs. The rightof reproduction occurs where the act of fixation takes place. The location of theact of making available takes place at least at the location of the computer, deviceor server on which copyright content it is made available, the location of the usersto whom access is provided including the locations to which transmissions may besent or received.70

h) Exceptions: A different set of exceptions apply to the right of reproduction thanto the MAR. Accordingly, a rights holder may have no right to control access ormaking available of a work by relying on the right of reproduction.71

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 themaking available right, the reproduction right is not (and was never envisaged byContracting 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 othercompanies, [2013] EWHC 2058 (Ch) (at ¶45-47); Dramatico Entertainment Ltd and others v British SkyBroadcasting Ltd and others, [2012] EWHC 268 (Ch) at ¶68-71; Sterling at 471-72 (explaining that the act ofmaking available occurs “(i) at the place where the content provider transmits material to a server site, or providesmaterial for online transmission to an end user; (ii) at the server site; and (iii) at the reception point or points atwhich 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 theGreen Paper, COM(96) 586 at 13; von Lewinski report at ¶19, 65-89, 109-15.

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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 MakingAvailable 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 Théberge v. Galerie d’Art du Petit Champlain Inc., [2002] 2 S.C.R. 336 at ¶42-50 (confirming that reproductioninvolves “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.

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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

Parliament’s 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 theexception on the person who is entitled to the exception, or some other person, from not later making the contentavailable 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 andCreators”, 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 Ltdand others v British Sky Broadcasting Ltd and others, [2012] EWHC 268 (Ch) at ¶71 (adopting the Roadshowprinciple into UK law); Polydor at ¶6-9 (finding that connecting a computer to the internet, where the computer isrunning P2P software, and in which music files containing copies of the claimant's copyright works are placed in ashared directory, falls within the infringing act).

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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 Newzbincataloguing and indexing system and then to download those films using the NZBfacility, all in the way I have described in detail earlier in this judgment. This service isnot remotely passive. Nor does it simply provide a link to a film of interest which is madeavailable by a third party. To the contrary, the defendant has intervened in a highlymaterial way to make the claimants’ films available to a new audience, that is to say itspremium members. Furthermore it has done so by providing a sophisticated technical andeditorial system which allows its premium members to download all the componentmessages 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] EWHC2058 (Ch) at ¶38, 42 (holding that a website acting as an “indexing and aggregation portal” that points users to livefeeds of copyright sports streams constitutes a communication as the works were made available to the public byelectronic transmission); Twentieth Century Fox Film Corp and others v Newzbin Ltd, [2010] EWHC 608 (Ch) at¶125 (holding that the defendant’s operation of a website index that allows users to search links to illegal content onthird-party sites, thereby making them available to a new audience, was an infringement by communication); EMIRecords Ltd and others v British Sky Broadcasting Ltd and others, [2013] EWHC 379 (Ch) at ¶45-49 (holding thatthe operators of a P2P indexing website, providing an organized directory of musical content which users canbrowse and select, make such content available and communicate copyright works to the public by electronictransmission); 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 Treatyobligations); Sterling at 468; USA v. O’Dwyer at printed pages 2-3, 6-7 (considering the cataloguing and collectionof hyperlinks to infringing materials to be a making available under UK law).

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a result, I have no doubt that the defendant’s premium members consider that Newzbin ismaking 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 ofdistribution to the public which may emerge as the object of an alternative right in theframework of the ‘umbrella solution’). Also, it could lead to catastrophicconsequences, for example, in cases where ‘copyright havens’ (without appropriate

80 Twentieth Century Fox Film Corp and others v Newzbin Ltd [2010] IP&T 1122 at ¶125.81 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 forinstruction exception at s. 29.4, and a fair dealing exception under s. 29 or 29.1.

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copyright protection) may be chosen for the act of making interactive transmissionpossible.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 Ficsor at 508-9.84 Sirius FCA at ¶36-48.85 Under the real and substantial connection test, the conflicts of laws rule adopted by the Supreme Court of Canadato determine the territorial reach of the Copyright Act, each of these activities would fall within the MARs, even ifpart of the activity takes place outside of Canada. SOCAN v. CAIP at ¶57-78; Sirius FCA at ¶44; Disney EnterprisesInc. v. Click Enterprises Inc. (2006), 49 C.P.R. (4th) 87 at ¶14-31. As to the scope of the right, see also Sterling at471-72 and Ficsor at 508-9. The courts in the European Union applying their targeting conflicts of laws rule haverecognized that the MAR applies to both the locations of the server and where users are located even if outside ofthe place in which enforcement is sought. See EMI Records Ltd and others v British Sky Broadcasting Ltd andothers, [2013] EWHC 379 (Ch) at ¶49-50; Football Association Premier League Ltd v British Sky Broadcasting Ltdand 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 ofinfringement 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 mightbe liable might also be different.87 Von Lewinski report at ¶79.

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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 copyrightowner's suing a multitude of individual infringers (‘chasing individual consumers is time consuming and is ateaspoon solution to an ocean problem,’ Randal C. Picker, ‘Copyright as Entry Policy: The Case of DigitalDistribution,’ 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 ofinfringement for the MAR and reproduction rights are different. For example, an end user distributing content usinga peer-to-peer network would be liable for violating the MAR by a showing that a copyright-protected file is beingpublically made available on an Internet connected computer. No inquiry would need to be made as to whether thesource file was reproduced in order to be “shared” and no evidence would need to be gathered to show that anydownload 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; vonLewinski 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 ofthe MAR in the EU: “Interested parties confirm that as far as the transmission of a protected work or related subjectmatter over the net involves reproductions, the reproduction right should ensure adequate protection. Both MemberStates and interested parties are, however, agreed that such protection would not be sufficient as thetransmission of a work in a network environment ‘on-demand’ will not necessarily imply acts ofreproduction. In order to allow for interactive transborder services to be provided throughout the Single Market, itis considered necessary that rightholders should have available to them an additional right which enablesthem to adequately control ‘on-demand’ transmissions of their works or other subject matter.” [Emphasisadded.])

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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 MAR’s 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 Polydor at ¶7; Roadshow at ¶157, 328-29, 666.93 CCH at ¶38 (“Countenance” in the context of authorizing copyright infringement is understood in its strongestdictionary meaning, namely, “[g]ive approval to; sanction, permit; favour, encourage”), ¶45 (describing thepresumption).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.

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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 Microsoft’s assertion at ¶54 of its factum that the 1999 Board decisionin the Tariff 22 case means “an existing exclusive right is already engaged by a person who makes musical worksavailable for on demand access by download, and the owner of that existing right is already entitled to claimpayment”. The Board’s decision considered a specific factual scenario in which a content owner posts a work to apublically available web site. The Board concluded that the act of posting constitutes authorization to communicatethe work to the public at p. 46. It will be immediately appreciated that the Board was addressing a specific questionof fact (see CCH at ¶38) and not stating a general principle applicable that all acts or possible acts of makingavailable under the WIPO Treaties could be covered by the authorization right. One cannot extrapolate that becauseone possible scenario may be covered by the authorization right, that all acts would be. It also bears noting that theBoard was addressing the authorization of a communication, not the authorization of a reproduction. The Board alsodid not consider possible defenses to the authorization theory including those raised above about the scope of thereproductions 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.

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iii. The Distribution Right Applies only to Tangible Objects and Does Not Deal with theIssue 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

Canada’s 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 Court’s 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 SocietyDirective, 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.

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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 user’s 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.

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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, whichdiscloses Parliament’s focus not on a copy- or performance-related activity, but apreparatory activity, the provision of public access to content, and transmissionsthereof, if they occur;

b) 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 contentfor works;

c) This is the only technologically and media neutral approach, in that all provisionof access to content is encompassed under a single legal test;

d) This is the only reading that is consistent with the decisions in ESA and Rogerswhich authoritatively construed s. 3(1)(f); and

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e) This is the only reading that is consistent with the interpretation of the SupremeCourt 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 majority’s 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 Bishop at 477-79; ESA at ¶12-27.106 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 ofArticle 20 of the Berne Convention for the Protection of Literary and Artistic Works, as regards Contracting Partiesthat are countries of the Union established by that Convention. This Treaty shall not have any connection withtreaties 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.

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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-copy-

related 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 Canada’s 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 ESA at ¶27.110 See ¶140-148.

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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 R. v. Verrette, [1978] 2 S.C.R. 838 at 845-846. See ¶53-55 above.112 Microsoft Submission at ¶24-26. The sequence of events was the following: First Reading of C-32 (CopyrightModernization Act): June 2, 2010; Second Reading of C-32: November 5, 2010; Reintroduction of CopyrightModernization Act as Bill C-11: September 9, 2011; Hearing of ESA Appeal: December 6, 2011; Passage by Houseof Commons, June 18, 2012; Royal Assent: June 29, 2012; ESA decision: July 12, 2012; Order in Council bringings. 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 Parliament’s intent at the time ofenactment); Ruth Sullivan, Sullivan on the Construction of Statutes (5th Ed.) (LexisNexis Canada Inc.: Toronto,2008) at 146-47; Pierre-André Coté, 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 Board’s decision and the applicablejurisprudence and concluded that the download of a music file or a stream did, in fact, constitute a communication ofthat musical work to the public by telecommunication and dismissed those applications for judicial review”).

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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

Parliament’s 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 Act’s 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 toproduce or reproduce a work “in any material form whatever”. Media neutrality meansthat the Copyright Act should continue to apply in different media, including moretechnologically advanced ones. . . . [I]t exists to protect the rights of authors and others astechnology 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 SOCAN v. CAIP at ¶45-46; CWTA v. SOCAN at ¶20.116 Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (T.D.), aff’d [1988] 1 F.C. 673 (C.A.),aff’d [1990] 2 S.C.R. 209, cited with approval in Rogers at ¶39.117 [2006] 2 S.C.R. 363 at ¶49.

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Although the words “in any material form whatever” qualify the right to “produce orreproduce the work” in s. 3(1), the same principle should guide the application of theneutral 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 provision’s

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 Rogers at ¶39.119 ESA at ¶5, 121.120 Robertson at ¶49.121 ESA at ¶4-6, 9.

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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, Parliament’s goals were to:

(a) update the rights and protections of copyright owners to better address thechallenges and opportunities of the Internet, so as to be in line with internationalstandards[…]

122 See ¶67-90.

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(g) ensure that it remains technologically neutral123

establish rules that are technologically neutral, so they are flexible enough to evolvewith changing technologies and the digital economy, while ensuring appropriateprotection for both creators and users.124

The purpose of the new right is to “control the release of copyrighted material on theInternet”.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 Copyright Modernization Act, preamble, (a).124 Government Backgrounder.125 Government Backgrounder; “What the Copyright Modernization Act Means for Copyright Owners, Artists andCreators”.126 Novels may be read over the Internet or in an e-book file; TV series or music files can be rendered from a streamor a download with equal fidelity; downloaded files are often programmed to play as they are being transmitted. Itshould be anticipated that these kinds of fusion will only increase as time passes, and may indeed be replaced bydifferent consumption technologies entirely. This is why, as discussed above, the MAR applies to a “makingavailable” by any means, not the subsequent delivery or consumption technology.127 ESA at ¶8.

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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 ActMeans 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.

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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 Rogers at ¶44.133 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.

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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 generalrights described in s. 3(1). The introductory paragraph defines what constitutes“copyright”. It states that copyright “means” the sole right to produce or reproduce awork in any material form, to perform a work in public, or to publish an unpublishedwork. This definition of “copyright” is exhaustive, as the term “means” confines itsscope. 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 paragraphprovide the basic structure of copyright. The enumerated rights listed in the subsequentsubparagraphs are simply illustrative.

136 Lewinski Report at ¶81-89; “What the Copyright Modernization Act Means for Copyright Owners, Artists andCreators”; 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”).

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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 theintroductory 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 therelevant territory”); Copyright Agency Limited v State of New South Wales [2007] FCAFC 80 at ¶146, rev’d on othergrounds in HCA (“Publication occurs when a reproduction is put on offer to the public, where the person who makesthe 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. Giventhat the scope of the three rights should be harmonious, any argument based on the preamble to s. 3(1) should notread down these specifically enacted amendments. A fortiori, the decision in ESA about the scope of s. 3(1)(f) shouldnot be used to restrictively interpret the making available right for makers of sound recordings given the structuraldifferences between s. 3(1)(f) and ss. 15(1.1)(d) and 18(1.1)(a).

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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 isexpressed in technologically neutral terms. Juridically, member states may complywith the right either through local communication rights, or, for those countrieswho have applied the distribution right to temporary digital copies, through theright 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 thecountries which preferred the right of communication to the public as a general optionseemed to be more numerous, the Treaty, first, extends the applicability of the right ofcommunication to all categories of works, and then clarifies that that right also coverstransmissions in interactive systems described in a legal-characterization-freemanner. […] [While] Contracting Parties are free to implement the obligation to grantexclusive right to authorize such “making available to the public” also through theapplication of a right other than the right of communication to the public or through thecombination of different rights as long as the acts of such “making available” are fullycovered by an exclusive right (with appropriate exceptions). By the “other” right, ofcourse, first of all, the right of distribution was meant, but a general right of makingavailable 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 basicoptions – 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”.)

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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 thetransmission of works and objects of related rights on the Internet and in similar networksshould be covered by an exclusive right of authorization of the owners of rights, withappropriate exceptions, of course. There was, however, no agreement on which oneshould be chosen of the two main candidates: the right of communication to the publicand the right of distribution.

The need for the application of one or both of those rights emerged because, although itwas recognized that reproductions take place throughout any transmissions in digitalnetworks, 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 theliability of those who make available to the public works and objects of related rights insuch 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 makingavailable were only rights that would cover the act of making available as a form ofdiffusion in the broadest sense, as opposed to the mere reproduction right. In fact, thereproduction right was mentioned in the Basic Proposal as applying to any reproductionstaking place in the course of such making available, and as applying in addition to a rightof making available. Likewise, discussions in the Committees of Experts and at theDiplomatic 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 SocietyDirective, 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.

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right applying to acts of reproduction in the context of internet transmission, and that anyother, additional right or rights would have to cover the (different) act of makingavailable.

Therefore, I disagree with the expert opinions of J. de Beer and S. Ricketson, as far asthey consider the reproduction right (including the right to authorize reproduction) to be apossible candidate right to implement the making available right as regardsdownloads...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 Ricketson’s 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. Mihály Ficsor dated March 6, 2013 confirms the following important

points addressed above:

a) It was the intention of the drafters of the WIPO Treaties to extend the exclusiveMAR to both downloads and streams (pp. 3-4, 12-14);

b) The modes of implementation for the MAR in member countries are (i)communication to the public that includes communications of streams anddownloads, (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

c) The traditional concepts of distribution or communication to the public wouldrequire clarification to fulfil the objectives of the MAR (p. 6).148

147. Nowhere in the Ficsor report is it suggested that:

145 von Lewinski Report, answering question 6 (quote from ¶101-2).146 von Lewinski Report at ¶102-3.147 Ricketson Report at ¶19-20.148 Ficsor Report at 3-8, 10-14, 20-22.

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a) the reproduction right alone was considered an appropriate vehicle forimplementation of the making available of copies part of the MAR;

b) any country had implemented the making available obligation via thereproduction right; or

c) a “tangible copy” distribution right would be appropriate for the MAR.

148. 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. Ficsor’s 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 ofdistribution 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 theright of rental under the said Articles, refer exclusively to fixed copies that can be putinto circulation as tangible objects’–does not contradict the applicability of the right ofdistribution for digital interactive transmissions in the framework of the umbrellasolution. The agreed statement only indicates the minimum level of protection, namelythat the minimum obligation is to extend the right of distribution to the makingavailable of tangible copies; there is, however, no obstacle under the WCT to extend theapplication of a right beyond the minimum scope and level prescribed therein (in thiscontext, to extend the right of reproduction also to cover distribution throughreproduction through transmission and to apply this broader right of distribution aspart 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 WIPO Guide at 209.150 See Ricketson Report at ¶20-25.151 Cineplex LP submissions at ¶51; Ficsor at 499-500.

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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 Canada’s 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 Ricketson’s report does not disagree with Dr. Ficsor’s 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 Ricketson’s 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 Ricketson’s 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. Whatcounts is the initial act of making the work available, not the mere provision of

152 Seewww.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 “Ihave not come across any country that would have satisfied its WIPO treaty obligations regarding the makingavailable rights in respect of downloads or even the mere offer for access by the reproduction right” and citing to aWIPO report supporting her conclusion).153 Ricketson Report, ¶9(b).154 Ricketson Report, ¶37-38, 49.

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server space, communications connections, or facilities for the carriage and routingof signals. It is irrelevant whether copies are available for the user or whether thework is simply made perceptible to, and thus usable by, the user.155 [Emphasisadded.]

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, ormembers of a particular performer’s fan club. As is clear from the formulation “such away that members of the public may access” (emphasis supplied), the right istriggered when the public is invited to access, rather than when any member of thepublic in fact has accessed. Equally importantly, the right applies to the “work”; it is notlimited to “performances” of the work. Thus it covers making the work available both asdownload and as a stream.

Member States may comply with the right either through adopting a specific makingavailable 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 theright to distribute copies, as the United States urged during the drafting period. Inadopting what came to be known as the “umbrella solution,” allowing member States toimplement 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 Ricketson’s 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 thegeneral public may access the work, should come within the scope of the right. […] It isnot necessary that the offer be accepted: ‘making available’ embraces incipient as well aseffected communications.157

155 Note 10.10 to draft WCT, reproduced in Ficsor at 4.144.156 Ginsburg, “Recent Developments” at 37; WIPO Guide at 208 (the treaties cover those acts “which only consist ofmaking the work accessible to the public [where] . . . members of the public still have to cause the system to make itactually 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]heoffer of the content is sufficient for the making available right to come into play whether the user ultimately requeststhe transmission or not.”); Reinbothe and von Lewinski at 108, 112; Sterling at 468; Green Paper at 15 (confirmingthat the right applies to the “mere offering of copies to the public” and that “it is irrelevant whether copies areavailable for the user or whether the work is simply made perceptible to, and thus usable by, the user”); vonLewinski Report, ¶26157 Ricketson Report, ¶16(b); Ricketson and Ginsburg at 12.58; Ginsburg, “Recent Developments”, at 37.

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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 neutralright. It applies as soon as a work, performance, or phonogram, which is stored on aserver, is rendered accessible to the public through an internet or other network orconnection that may be used by members of the public in such a way that they mayaccess these works, performances, or phonograms, at the time and from the placechosen.158 In addition, where a transmission leading to an actual access by the useroccurs, 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 Ricketson’s 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 fromthe right of reproduction. Each of them covers different uses: the making available rightcovers the initial offer of content from a server for access through the internet or othernetworks by members of the public as described in the relevant provisions, and it coversall of the elements of the transmission to the end user’s terminal, where it occurs. Thereproduction right covers the making of copies (fixations of works and other subjectmatter), be it on the server from which the content is made available, and, as the case maybe, on servers during the transmission from there to the receiving end and in the storagemedium or device of the receiver. The fact that both rights are covered by distinct articlesin both treaties and are described differently shows that they are distinct and have theirown 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 Von Lewinski report, answer to question 1.159 Ricketson and Ginsburg at 12.59160 Von Lewinski report, answer to question 3.

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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 Théberge. First, theupload/reproduction on the server constitutes a reproduction; however, the reproductionright only covers the reproduction, but not the act of rendering the content accessible tothe public, and thus does not constitute an act of making available […]. In this respect, Idisagree with the expert opinions by Sam Ricketson and J. de Beer, as supported in thesubmissions by Apple. Therefore, it cannot be considered to cover the offer of contents inintangible form to members of the public as described in the relevant provisions of theWCT and WPPT.

In fact, a reproduction made on a server does not automatically render the contentaccessible 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 newreproduction; for example, where a copy is stored on a computer of a user of a peer-to-peer network, the user at one point of time has made one copy, but each time he turns onthe computer again and connects his file to the internet, he performs separate acts ofmaking available (and, if without the right owner’s authorization, multiple acts ofinfringement), without making a new upload/performing a new act of reproduction. Thereproduction right does not cover those repeated acts of making available, so that a gapremains.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 user’s storage device or medium; however, thisindividual act does not cover the other aspects of the making available right as explainedabove. Furthermore, an end user who makes a copy at the end of a transmission via theinternet is not the person who makes it available, so that a mere reproduction right wouldonly allow a claim against such end user, but would not be a basis for a claim regardingthe act of making available. Therefore again, while I agree with Sam Ricketson thatArticle 8 WCT may be implemented in various ways “so long as the scope of protectionrequired by article 8 is accorded”, I disagree with his expert opinion where it states thatthe reproduction right would cover making available of downloads.163

162 von Lewinski Report, ¶109-10.163 von Lewinski Report at ¶115.

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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 itavailable might be liable for reproducing, distributing or authorizing the reproduction ordistribution. If the work or other subject matter is made available for streaming, theperson might be liable for communication.

…

The Objectors interpret Canadian copyright law to implement making available through acombination of communication and reproduction/distribution/authorization rights, whichmay apply depending on the nature of the access to the work, i.e. for streaming or fordownloading.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 von Lewinski Report at ¶111-14.165 de Beer Report at ¶18-19.166 de Beer Report at ¶23-24.167 de Beer Report, ¶33, unnumbered conclusion.

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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 Canada’s obligations under the WCT”.168

170. As with the report filed by Professor Ricketson, Professor de Beer’s 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 Beer’s previous writings suggest that the

communication right was used to implement Canada’s WCT MAR obligations rather than any

other right:

The more legally, purposively and practically sound interpretation of the makingavailable right in Canada is that it is not a separate right, but is subsumed within thecommunication right as interpreted by the Supreme Court. […]

The practical effect, if not the explicitly stated intent, of the Supreme Court’s rulings isthat making available was already a protected right under the umbrella ofcommunication, irrespective of implementation of the WIPO Internet Treaties. Copyrightmeans the rights of publication, reproduction and performance; performance includescommunication; 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 Parliament’s

authority under the Copyrights clause. As only one example, he states conclusively that:

168 de Beer Report, unnumbered conclusion.169 de Beer, “Copyright Royalty Stacking” at 361-62.

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Since it is not presently an infringement to access a copyrighted work, Bill C-60appears to allow for the circumvention of pure access controls. However, this distinctionmay not have much practical significance because accessing a digital work usuallyinvolves making a copy, albeit ephemeral. This could effectively create a sui generisright of access. Although some argue this is a natural evolution of copyright, others say itconstitutes an unprecedented expansion. Either way, the likelihood that the practicaleffect of this provision will be to create a right of access to digital materials is adeparture from existing copyright principles. The debate is simply about the length ofthis leap.170

173. Such statements are at odds with Professor de Beer’s 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 Beer’s own previous writings suggest that the Copyright

Modernization Act had the effect of overriding the Supreme Court’s 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 subsection2.4(1.1). Offering for sale a permanent download seems, on its face, to constitute makinga work available “in a way that allows a member of the public to have access to it from aplace and at a time individually chosen by that member of the public.” This interpretationwould suggest that SOCAN’s rights to collect communication royalties are indeed re-established. That, however, would also reintroduce all of the problems that a majority ofthe 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 amember of the public to have access” must be read with specific reference to thecommunication right that the clause defines. Making a work available in a way thatallows access to on-demand streaming would, relying on the Supreme Court’s reasoningin Rogers, implicate the communication right. Making a work available in a way thatallows access to a permanent download would, relying on the Supreme Court’s reasoningin ESA, implicate the reproduction right but not the communication right.101

101 One difficulty with that approach is the lack of statutory or principledgrounds 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 Canada’s strict authorization doctrine).

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reproduction. An interpretation to that effect could set a very problematicprecedent, so perhaps the issue of making available for reproduction is best leftalone by adjudicators until the need for a firm resolution arises.171

175. Professor de Beer’s 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 inthese judgments only concerns the question of under what circumstances an authorizationis an infringement. However, the judgments do not address the question that is relevanthere, namely, for what act authorization has been given.

The extracts of the cases show that authorization requires showing some acts by theperson 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. Belœil (Town), 1993CanLII 2960 (FC), [1993] 3 F.C. 227 (T.D.). Countenance in the context ofauthorizing copyright infringement must be understood in its strongest dictionarymeaning, namely, “[g]ive approval to; sanction, permit; favour, encourage”: seeThe New Shorter Oxford English Dictionary (1993), vol. 1, at p. 526.Authorization is a question of fact that depends on the circumstances of eachparticular 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 & TapesLtd., [1981] 2 All E.R. 812 (Ch. D.), at pp. 823-24. However, a person does notauthorize infringement by authorizing the mere use of equipment that could beused to infringe copyright. Courts should presume that a person who authorizes anactivity does so only so far as it is in accordance with the law: Muzak, supra. Thispresumption may be rebutted if it is shown that a certain relationship or degree ofcontrol existed between the alleged authorizer and the persons who committed thecopyright 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 andAuthorization” (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 toprove 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 lawand that are infringed when done without authorization of the right owner. A general

171 “Copyright Royalty Stacking” at 363-64, 372.

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right of authorization (i.e., in respect of any kind of use) would make obsolete the listingof concrete rights of authors and related rights owners in the law, since it would meanthat 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 ofdownloads) are not fully covered by any of the rights mentioned in Question 6above, also a right to authorize such acts cannot cover these acts. Therefore, for allthese reasons, the gaps still remain.172 [Emphasis added.]

176. Moreover, Professor de Beer’s 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 Canada’s 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 Parliament’s

clear intent to effectively harmonize its approach with international norms:

Whereas the Copyright Act is an important marketplace framework law and culturalpolicy instrument that, through clear, predictable and fair rules, supports creativity andinnovation and affects many sectors of the knowledge economy;

Whereas advancements in and convergence of the information and communicationstechnologies that link communities around the world present opportunities and challengesthat are global in scope for the creation and use of copyright works or other subject-matter;

Whereas in the current digital era copyright protection is enhanced when countriesadopt coordinated approaches, based on internationally recognized norms;

Whereas those norms are reflected in the World Intellectual Property OrganizationCopyright Treaty and the World Intellectual Property Organization Performances andPhonograms Treaty, adopted in Geneva in 1996;

172 von Lewinski Report at ¶122-25.173 de Beer, “Legal Strategies to Profit from Peer Production” (2008) 46 Can Bus LJ 269 at 274-75.

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Whereas those norms are not wholly reflected in the Copyright Act;174

178. Further, Professor de Beer’s statements fail to consider the approach taken by the

Supreme Court to construing intellectual property statutes. In Théberge, 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 Parliament’s stated intent.

G. OTHER POLICY CONSIDERATIONS

179. 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 Preamble, Copyright Modernization Act.175 Théberge at ¶6; also see SOCAN v. CAIP at ¶63-78; Rogers at ¶44-49.176 Théberge at ¶30-32; CCH at ¶10; SOCAN v. CAIP at ¶40, 88-89, 101, 114-16.177 Preamble, Copyright Modernization Act.

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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 Canada’s WIPO Treaty

obligations.178

ALL OF WHICH IS RESPECTFULLY SUBMITTED.

McCarthy Tétrault LLPOf counsel to Music Canada

12608234

178 Government Backgrounder, “What the Copyright Modernization Act Means for Copyright Owners, Artists andCreators”.

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PART IV — TABLE OF AUTHORITIES

TAB Authority

1. Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003)

2. Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (T.D.), aff’d[1988] 1 F.C. 673 (C.A.), aff’d [1990] 2 S.C.R. 209

3. ATCO Gas and Pipelines Ltd. v. Alberta, 2006 SCC 4

4. Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58

5. Bell Canada v. SOCAN, 2010 FCA 220

6. Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559

7. Bishop v. Stevens, [1990] 2 S.C.R. 467

8. Canadian Wireless Telecommunications Association v. SOCAN, 2008 FCA 6 (F.C.A.)

9. CAPAC v. CTV Television Network Ltd, [1968] S.C.R. 676

10. CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339

11. Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357

12. Copyright Agency Limited v State of New South Wales [2007] FCAFC 80

13. Disney Enterprises Inc. v. Click Enterprises Inc. (2006), 49 C.P.R. (4th) 87

14. Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others,[2012] EWHC 268 (Ch)

15. EMI Records Ltd and others v British Sky Broadcasting Ltd and others, [2013] EWHC379 (Ch)

16. Entertainment Software Association v. SOCAN, 2010 FCA 221

17. Entertainment Software Association v. Society of Composers, Authors and MusicPublishers of Canada, 2012 SCC 34

18. Felipa v. Canada (Minister of Citizenship and Immigration), 2011 FCA 272

19. Football Association Premier League Ltd v British Sky Broadcasting Ltd and othercompanies, [2013] EWHC 2058 (Ch)

20. Football Dataco Ltd and others v Sportradar GmbH and another, [2013] IP & T 191(Case C-173/11) (CJEU)

21. ITV Broadcasting Ltd and others v TVCatchup Ltd, [2013] IP & T 607 (Case C-607/11)(CJEU)

22. Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al., [1940] SCR 218

23. Muzak Corp. v. CAPAC Ltd., [1953] 2 S.C.R. 182

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24. Ontario (Labour) v. United Independent Operators Limited, 2011 ONCA 33

25. Perka v. The Queen, [1984] 2 S.C.R. 232

26. Phonographic Performance (Ireland) Limited v Ireland and Attorney General, (2012)C-162/10

27. Polydor Ltd and others v Brown and others, [2006] IP & T 542 [2005] EWHC 3191(Ch)

28. R v. Benson, 2012 SKCA 4

29. R. v. Goldman, [1980] 1 S.C.R. 976

30. R v. Hape, 2007 SCC 26

31. R. v. McLaughlin [1980] 2 S.C.R. 331

32. R. v. Monney, [1999] 1 S.C.R. 652

33. R. v. Pelich, 2012 ONSC 3611

34. R. v. Smith, 2011 BCSC 1826

35. R. v. Spencer, 2011 SKCA 144

36. R. v. Verrette, [1978] 2 S.C.R. 838 at 845-846

37. R. v. Villaroman, 2013 ABQB 279

38. Re Broadcasting Order CRTC 2010-168, 2012 SCC 68

39. Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23

40. Robertson v. Thomson Corp., [2006] 2 S.C.R. 363

41. Rogers Communications Inc. v. SOCAN, 2012 SCC 35

42. Sero v. Canada, 2004 FCA 6

43. Sirius Canada Inc. v. CMRRA/SODRAC Inc., 2010 FCA 348, upholding Satellite Radiodecision (Board Decision of April 8, 2009)

44. Sociedad General de Autores y Editores de España (SGAE) v Rafael Hoteles SA, [2007]IP & T 521, (Case C-306/05) (CJEU)

45. Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. ofInternet Providers, [2004] 2 S.C.R. 427

46. Tariff 22 Board Decision (1999)

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47. Théberge v. Galerie d’Art du Petit Champlain Inc., [2002] 2 S.C.R. 336

48. Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc [2011]EWHC 1981

49. Twentieth Century Fox Film Corp and others v Newzbin Ltd, [2010] EWHC 608 (Ch)

50. USA v. O’Dwyer (Westminster Magistrates’ Court, Ruling of District Judge Purdy datedJanuary 13, 2012)

51. Vigneux v. Canadian Performing Right Society, [1945] A.C. 108 (P.C.)

Secondary Sources

52. Canadian Government, Balanced Copyright – Glossary

53. Canadian Government, Copyright Modernization Act — Backgrounder

54. Canadian Government, Explanatory Memorandum on Tabling the WCT before theHouse of Commons

55. Canadian Government, Frequently Asked Questions

56. Canadian Government, What the Copyright Modernization Act Means for CopyrightOwners, Artists and Creators

57. Canadian Government, What We Heard During the 2009 Consultations

58. Pierre-André Coté, Interpretation of Legislation in Canada (3d) (Carswell:Scarborough, 2000)

59. Jeremy de Beer, “Constitutional Jurisdiction over Paracopyright Laws”, in MichaelGeist’s In the Public Interest

60. Jeremy de Beer, “Copyright Royalty Stacking”, in Michael Geist’s The CopyrightPentalogy

61. Jeremy de Beer, “Legal Strategies to Profit from Peer Production” (2008), 46 Can BusLJ 269

62. Jeremy de Beer, “Locks and Levies”, (2006), 84 Denver University Law Review 143

63. European Commission, Follow-Up to the Green Paper, COM(96) 586

64. Mihály Ficsor, “Copyright in the Digital Environment” WIPO/CR/KRT/05/7

65. Mihály Ficsor, The Law of Copyright and the Internet (Oxford: Oxford University Press,2002)

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66. Jane C. Ginsburg, “Recent Developments in U.S. Copyright Law—Part II, Caselaw:Exclusive Rights on the Ebb?”, Revue Internationale du Droit d’Auteur (October 2008)

67. Paul Goldstein and Berndt Hugenholtz, International Copyright (Oxford UP, 2010)

68. Hansard, May 15, 2013 (Speeches of MPs Ron Cannan and Rob Moore, CPC)

69. Peter Menell, “In Search of Copyright’s Lost Ark”, 59 J. Copyright Soc'y U.S.A. 1(2011-2012)

70. Oxford Canadian Dictionary, “available”, “communicate”, “communication”.

71. Randal C. Picker, ‘Copyright as Entry Policy: The Case of Digital Distribution,’ 47Antitrust Bull 423, 442 (2002))

72. Jorg Reinbothe and Silke von Lewinski, The WIPO Treaties 1996 (Butterworths, 2002)

73. Sam Ricketson and Jane Ginsburg, International Copyright and Neighbouring Rights(Oxford: Oxford University Press, 2nd Ed., 2006)

74. J.A.L. Sterling, World Copyright Law, 3rd ed. (London: Sweet & Maxwell, 2008)

75. Alain Strowel, Peer-to-Peer File Sharing and Secondary Liability in Copyright Law(Elgar, 2009)

76. Ruth Sullivan, Sullivan on the Construction of Statutes (5th Ed.) (LexisNexis CanadaInc.: Toronto, 2008)

77. U.S. Dept. of Commerce, “Copyright Policy, Creativity, and Innovation in the DigitalEconomy” (July 2013)

78. U.S. House of Representatives Report No. 105-551, pt. 1

79. WIPO, Basic Notions of Copyright and Related Rights, WIPO/CR/GE/00/1

80. WIPO, Guide to the Copyright and Related Rights Treaties Administered by WIPO(Geneva: WIPO, 2003)

81. WIPO, Memorandum Prepared by the Chairman of the Committee of Experts,CRNRIDC/4 (August 30, 1996)

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Treaties and Statutes

TAB Authority

82. Canada-U.S. Free Trade Agreement, December 10, 1987

83. Copyright Act, R.S.C. 1985, c. C-42

84. Copyright Modernization Act (Bill C-11, Royal Assent version)

85. Copyright Modernization Act (Bill C-32, First Reading version)

86. Criminal Code, R.S.C. 1985, c. C-46

87. Information Society Directive, 2001/29/ec

88. Interpretation Act, R.S.C. 1985, c I-21

89. World Intellectual Property Organization, WIPO Copyright Treaty, adopted in Genevaon December 20, 1996

90. World Intellectual Property Organization, WIPO Performances and Phonograms Treaty,adopted in Geneva on December 20, 1996

91. World Trade Organization, Agreement on Trade-Related Aspects of IntellectualProperty Rights (TRIPs)

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