Professional Documents
Culture Documents
: 33800
BETWEEN:
Appellant
(Applicant on Judicial Review)
- and -
Respondents
(Respondents on Judicial Review)
APPELLANT’S FACTUM
[REDACTED VERSION]
Martin W. Mason
(613) 786-0159
Gilles M. Daigle
(613) 786-0217
D. Lynne Watt
(613) 786-8695
Matthew S. Estabrooks
(613) 786-0211
TABLE OF CONTENTS
PART I – FACTS..................................................................................................1
A. Overview ........................................................................................1
B. SOCAN...........................................................................................2
C. Online Music Services ....................................................................4
i. Generally .............................................................................4
ii. Apple’s iTunes .....................................................................4
D. Previews.........................................................................................5
E. Copyright Board .............................................................................7
i. Generally .............................................................................7
ii. Tariff 22.A Decision .............................................................7
F. Federal Court of Appeal .................................................................9
PART II – ISSUES .............................................................................................11
PART III – ARGUMENT.....................................................................................11
A. General.........................................................................................11
i. The collective administration of copyright ..........................12
ii. The Board arrived at its decision on fair dealing
without hearing from the parties.........................................13
B. Issue 1: The Online Music Services’ use of previews does
not satisfy the first step in the test for fair dealing under
section 29 of the Act .....................................................................14
i. Definition of the term, “research” .......................................15
ii. The Federal Court of Appeal adopted a definition for
“research” without considering the legislative purpose ......17
iii. The purpose of the fair dealing provision is to foster
the creative process...........................................................17
iv. The purposes enumerated in sections 29 to 29.2 are
purposes which promote the public interest.......................20
v. The definition of “research” applied by the Federal
Court of Appeal is inconsistent with this Court's
decision in CCH .................................................................21
vi. Parallels to US jurisprudence.............................................22
vii. The interpretation of the term “research” adopted by
the Federal Court of Appeal is inconsistent with the
way that term is used elsewhere in the Act........................24
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PART I – FACTS
A. Overview
2. The decisions below have denied the Appellant and its members the right
to be compensated for an important use of their musical works by online
music retailers. The Copyright Board held that online music retailers are
not required to pay royalties to the Appellant for their use of previews of
musical works because that use constitutes “fair dealing” for the purpose
of “research” within the meaning of section 29 of the Copyright Act.
5. This Court has repeatedly held that the overarching purposes of the
Copyright Act are twofold: promoting the public interest in the
encouragement and dissemination of artistic and intellectual works, and
justly rewarding the creator of the work. The fair dealing exception is
intended to foster activities that further the purposes of the Copyright Act.
Neither communicating nor listening to music previews furthers the
purposes of the Copyright Act. These activities cannot be considered
research because they do not promote the public interest in the
encouragement and dissemination of artistic and intellectual works.
Robertson v Thomson Corp, 2006 SCC 43, [2006] 2 SCR 363 at para 69.
6. In the alternative, the Appellant submits that the manner in which online
music retailers deal with the Appellant’s musical works is unfair. The
Appellant submits that both the Copyright Board and the Federal Court of
Appeal erred in the application of the test for fairness as set out by this
Court in CCH Canadian Ltd. v Law Society of Upper Canada.
B. SOCAN
collective societies are affiliated with foreign societies, which allows them
to administer the works of foreign copyright owners in Canada, as well as
domestic works.
10. Many collective societies grant licences for the use of their members'
works and set the conditions for that use without resorting to the Copyright
Board (the Board)’s tariff approval process. That is not the case for
SOCAN. The Act requires SOCAN to file proposed tariffs for the Board’s
approval and certification in the Canada Gazette, in the form of statements
of royalties called “tariffs”. A music user who pays the fees and meets the
other conditions set out in a certified tariff has the statutory right to use
SOCAN’s musical works in accordance with the terms of that tariff.
11. The issues involved in this appeal arise out of proceedings before the
Board for the certification of a SOCAN tariff targeting the use of music on
the Internet. The tariff in issue is known as SOCAN Tariff 22.A. It applies
to the communication of musical works to the public by online music
services that sell and communicate recordings of musical works to
consumers through the Internet.
12. In certifying a tariff, the Board hears submissions from both the collective
society proposing the tariff and any affected copyright users who choose
to object to its approval. In the case of Tariff 22.A, the objectors consisted
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of music users who operate businesses that sell music to the public
through the Internet or other similar means of telecommunication.
i. Generally
14. Although their respective operations and designs may differ somewhat,
the Online Music Services share many key features, including an
interactive interface that allows consumers to identify musical works by
title, album, genre and artist. Each Service also provides consumers with
the ability to listen to previews of musical works, whether or not they
decide to make a purchase.
15. The music catalogue of each Service is unique, but because SOCAN
administers the performing rights in virtually the entire world repertoire of
music, all or virtually all of the millions of musical works in the respective
catalogues of the Services are administered by SOCAN.
Decision of the Copyright Board, dated October 18, 2007 [Board Decision]
at para 20, Appellant's Record at 14.
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16. Much of the focus before the Copyright Board and the Federal Court of
Appeal was on the iTunes service offered by the Respondent, Apple
Canada, Inc. and its U.S. parent company, Apple, Inc. This focus was due
to the fact that iTunes is the dominant player in Canada and the world,
and its witness, Apple Vice-President Eddy Cue, presented a substantial
amount of evidence in the proceedings before the Board. However, the
issues raised on this appeal apply equally to all of the Online Music
Services.
D. Previews
17. Tariff 22, as filed by SOCAN over the years 1996-2006, targeted various
uses of music on the Internet, including the Online Music Services’ sale
and communication of musical works to consumers online. At the hearing
before the Board, SOCAN proposed that the tariff item applicable to online
music services provide for different levels of compensation based on
whether the retailer offered previews as part of its service.
18. Previews are a feature common to all of the Respondent Online Music
Services. All of the Respondents' online music stores allow consumers to
listen by way of a preview to an excerpt of a musical work. The Board
defined previews as follows:
19. The term “stream” in the passage quoted above refers to the ability of the
Online Music Services to communicate a temporary copy of a musical
work to a consumer in such a way that the consumer’s local computer
does not store a permanent copy of the work. Streaming can be
contrasted with downloading, a communication process that results in the
creation of a permanent copy of a musical work on the consumer’s local
computer.
20. With the iTunes service, each preview consists of a 30-second segment of
a song. Every song in the iTunes catalogue can be previewed and a
consumer can listen to previews of as many songs as she likes as many
times as she likes. Any visitor to the iTunes store can listen to previews,
regardless of whether she makes a purchase or has registered with the
service.
21. The evidence presented to the Board by Apple witness Eddie Cue was
that, on average, ten previews are communicated for each download of a
musical work sold.
22. During the year 2005, iTunes alone sold over CONFIDENTIAL downloads
in Canada. Based on Mr. Cue's evidence, these iTunes downloads
represented over CONFIDENTIAL previews or as many as
CONFIDENTIAL hours of SOCAN music used during the year 2005 for a
single online music retailer. Considering the growth of the online music
market in recent years, the number of previews communicated annually
since 2005 would have increased dramatically. Given the decisions below,
this extensive use of SOCAN’s copyright music remains uncompensated.
E. Copyright Board
i. Generally
23. The Board is an administrative tribunal created by the Act whose mandate
is set out in sections 66 to 66.91. Along with other duties, the Board is
tasked with the oversight of the system set out in the Act for the collective
administration of copyright, which includes the consideration and approval
of royalty tariffs proposed by collective societies, including the Appellant.
24. The Board conducted the hearing of SOCAN Tariff 22 for the years 1996-
2006 in two “phases.” The first phase dealt with broad legal issues
regarding copyright and the use of music on the Internet. Several aspects
of this “Phase 1” decision of the Board were appealed to this Court.
25. This appeal arises out of the second phase of the Tariff 22 hearing before
the Board, which dealt with tariff valuation issues, that is, the quantum of
royalties to be approved for various Tariff 22 uses. That “Phase 2” hearing
took place in early 2007.
26. In its 2007 decision, the Board approved Tariff 22.A for the sale and
communication of full-length musical works by the Online Music Services.
However, the Board refused to approve a tariff component for their
communication of music previews because, in the Board’s view, that
activity was covered by the fair dealing exception to copyright infringement
in section 29 of the Act and, consequently, no tariff was certifiable for that
use.
Board the issue of whether the fair dealing exception might apply to such
previews. The Board raised and dealt with the issue on its own initiative,
without notice to or input from the parties, when it rendered its Phase 2
decision.
28. In coming to its conclusion that the Online Music Services’ use of previews
constituted fair dealing, the Board relied on the decision of this Court in
CCH v. Law Society of Upper Canada (CCH). The Board purported to
adopt and to apply the guidance of this Court stipulating that the word
“research” be given a large and liberal interpretation.
29. The Board determined that the use of previews by the Online Music
Services constituted a dealing with a musical work for the purpose of
research. The Board focussed on the Services’ customers, i.e., the
recipients of the communications of the previews, and concluded that their
online requests for music previews constitute research within the meaning
of section 29:
30. The above paragraph represents the totality of the Board’s analysis of
whether the communication of music previews constitutes “research”
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31. At paragraphs 110 to 115 of its decision, the Board reviewed the six
factors identified by this Court in CCH to determine whether the dealing
was, in fact, fair: the purpose, character and amount of the dealing;
alternatives to the dealing; the nature of the work and the effect of the
dealing on the work.
32. The Board held that, according to its review of the six factors, the
practices and policies of the Online Music Services with respect to offering
30-second previews of musical works were "research-based and fair."
33. In particular, the Board considered the third factor, the amount of the
dealing, on an individual preview basis and examined the communication
of a single 30-second music preview to a single consumer, rather than in
the aggregate. As noted in above paragraph 22, iTunes alone
communicated, in the aggregate, over CONFIDENTIAL music previews to
Canadian consumers, representing CONFIDENTIAL hours of SOCAN
music use in 2005 alone. However, on an individual preview basis, the
Board concluded that 30 seconds was a fair amount of the work to use:
34. SOCAN sought judicial review of the Board’s decision that the Online
Music Services’ use of previews constituted “fair dealing for the purpose of
research” within the meaning of section 29 of the Act.
issue, the Board would come to a decision about the interpretation of the
fair use exception and its field of application without the benefit of
discussion with the affected parties.
36. However, the Court of Appeal agreed with the Board that the term
“research” in section 29 of the Act ought to be defined as, “the action or an
instance of searching carefully for a specified thing or person.” The Court
of Appeal held that this definition was broad enough to include the
situation where a “consumer is searching for an object of copyright that he
or she desires and is attempting to locate and wishes to ensure its
authenticity and quality before obtaining it.” The Court of Appeal held that
the purpose of previews was to assist the consumer in seeking and finding
a desired musical work.
Court of Appeal Decision at paras 20, 22, Appellant's Record at 83, 84.
38. While the Court of Appeal stated that it found the usage data “surprising”,
it did not elaborate further on that particular finding. Instead, it concluded
that it was unable to evaluate the appropriateness of SOCAN’s proposed
approach to measuring the extent of preview use, and that the yardstick
proposed by SOCAN raised its own set of questions, including whether it
makes the third factor (the amount of the dealing) the determinative factor
in an assessment of fairness.
PART II – ISSUES
40. In the alternative, if the communication of music previews falls within the
meaning of “research”, whether the Online Music Services’ dealing with
the Appellant’s musical works for that purpose is “fair”. The Appellant
submits that it is not.
A. General
41. The main issue in this appeal is essentially one of statutory interpretation.
The Appellant submits that the Board and the Court of Appeal below erred
by simply choosing one possible dictionary definition for the term
“research” without fully considering the statutory context surrounding the
term.
42. The correct interpretation of the term “research” must recognize the
objectives of Canada’s copyright scheme, the purposes of the Act and the
intention of Parliament in drafting section 29. Both the Board and the
Court of Appeal failed to undertake this purposive analysis.
43. In the alternative, if this Court agrees that the communication of music
previews by Online Music Services properly falls within the meaning of
“research”, the Appellant submits that, based on the applicable criteria
established by this Court, the Services’ dealing with the Appellant’s
musical works is not “fair” in the circumstances at hand.
44. In order to properly interpret the Act and its administration, particularly as
it relates to the collective administration of copyright and proceedings
before the Copyright Board, it is necessary to discuss the tariff certification
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process.
46. The Act expressly provides for the creation and administration of these
collective societies and establishes procedures for setting their respective
tariffs in sections 67 to 76. Upon approval by the Board, these tariffs set
the royalties that collective societies can charge for the use of their works.
47. The role of the Board is to establish values for the various uses of
copyright works in the repertoire of a collective society and certify a tariff
that reflects these values and related terms and conditions. Essentially,
satisfaction of the tariff requirements allows a user to do what would
otherwise be an infringement of the copyright in the works administered by
a collective society, such as the Appellant.
49. The question raised in this appeal is whether the Online Music Services’
marketing practice of communicating 30-second previews of musical
works over the Internet without consent constitutes infringement of the
Appellant’s copyright. The amount of any royalties to be paid for the use of
such previews is irrelevant to the issues raised by this appeal.
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50. Section 3(1)(f) of the Act grants to the copyright-holder the exclusive right
to “communicate the work to the public by telecommunication.” The
Federal Court of Appeal has established that 30-second music previews
constitute a substantial part of a musical work and that the Internet
communication thereof to consumers constitutes a communication to the
public by telecommunication within the meaning of section 3(1)(f).
Decision of the Copyright Board, dated August 18, 2006 at paras 37-46,
aff'd Canadian Wireless Telecommunications Assn v Society of
Composers, Authors and Music Publishers of Canada, 2008 FCA 6.
51. The Respondents in this appeal do not dispute that the Internet
communication of previews of musical works constitutes a communication
of a substantial part of a copyright-protected work to the public by
telecommunication.
52. Unless a statutory exemption applies, this use of SOCAN’s musical works
requires a licence and a tariff for this use ought to have been certified by
the Board.
ii. The Board arrived at its decision on fair dealing without hearing from
the parties
53. Previews perform essentially the same function in the online retail context
as free samples do in the traditional, physical retail context. In the physical
retail context, a supplier may chose to negotiate an agreement with a
retailer for the provision of free samples in order to attract customers. Both
the retailer and the supplier must agree on the terms of this promotion,
including which party will bear the cost of the free samples. In the absence
of an agreement, the retailer would have to use stock purchased from the
supplier as the source of the samples and bear the cost of free distribution
to consumers himself.
not bargain directly; they participate in a hearing before the Board and the
Board certifies a tariff that is often intended to approximate the outcome of
a notional bargaining process. The parties to a hearing rely on the Board
to take all points of view into consideration and to reach conclusions
based on evidence and argument presented by the parties.
55. The Board short-circuited this process at the hearing between the
Appellant and the Online Music Services by coming to a conclusion that
was not advocated by either party. Neither the Appellant nor the Online
Music Services advanced (or were given the opportunity to advance)
evidence and arguments as to whether music previews could be
considered fair dealing for the purpose of research under the Act. By
proceeding in this way, the Board ruled on a question of law that has
significant consequences for the Appellant and the Respondents as well
as other creators and users of online copyright content without any input
from those creators and users.
56. The Board removed the subject of free samples from the “bargaining
table” and interpreted the Act in such a way that requires the Appellant to
bear the cost of the Services’ decision to distribute free samples, without
hearing the Appellant’s position on the issue. The Appellant submits that
Parliament did not intend the Act to have this effect.
B. Issue 1: The Online Music Services’ use of previews does not satisfy
the first step in the test for fair dealing under section 29 of the Act
57. This Court has established a two-step test to determine whether a given
activity qualifies as fair dealing pursuant to section 29 of the Act:
In order to show that a dealing was fair under section 29 of the Copyright
Act, a defendant must prove: (1) that the dealing was for the purpose of
either research or private study and (2) that it was fair.
CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13, [2004] 1
SCR 339 [CCH] at para 50.
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If the purpose of the dealing is not one that is expressly mentioned in the
Act, this Court is powerless to apply the fair dealing exemptions.
CCH Canadian Ltd v Law Society of Upper Canada, 2002 FCA 187 at para
127.
59. In this case, in order to communicate music previews to the public without
paying a certified tariff rate, the Online Music Services must first prove that
such communications are effected for the purpose of research or private
study.
Drolet v Stiftung Gralsbotschaft, 2009 FC 17, [2010] 1 FCR 492 at paras 263-
264.
60. The Appellant submits that the Federal Court of Appeal erred in
concluding that the term “research” includes communicating previews of
musical works over the Internet for the purpose of facilitating retail
transactions.
61. The Court of Appeal considered four possible definitions for the word
“research”:
(a) The Concise Oxford English Dictionary, which defines the term as
follows:
(b) The Canadian Oxford English Dictionary, which defines the term as
follows:
(c) The New Shorter Oxford English Dictionary, which defines the term
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as follows:
The Concise Oxford English Dictionary, 10th ed, sub verbo "research".
The Canadian Oxford English Dictionary, Thumb Index ed, sub verbo
"research".
The New Shorter Oxford English Dictionary, Thumb Index ed, sub verbo
"research".
The Random House Webster’s Unabridged Dictionary, 2nd ed, sub verbo
"research".
62. The Court of Appeal, relying on its observation that “[t]he legislator chose
not to add restrictive qualifiers to the word ‘research’ in section 29,” chose
to rely on the initial, rare definition from The New Shorter Oxford English
Dictionary and concluded as follows:
1
This annotation indicates that this usage of the term first appeared in the late 16th century and is
now rare.
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63. The Appellant submits that both the Board and the Court of Appeal erred
in their interpretation of the term “research” as it is used in section 29 of
the Act. The definition adopted by both the Board and the Court of Appeal
fails to account for the purposes of the Act in general and the fair dealing
provision in particular.
Canada Trustco Mortgage Co v Canada, 2005 SCC 54, [2005] 2 SCR 601 at
para 10.
65. If the meaning of a term in a statute is clear, then the ordinary meaning
will dominate; if the meaning is not clear, then the words must yield to an
interpretation that best meets the overriding purpose of the statute.
66. In the case of Tariff 22.A, the meaning of the term “research” is not clear.
The Appellant submits that when faced with more than one plausible
interpretation, the Court of Appeal erred in simply selecting one without
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iii. The purpose of the fair dealing provision is to foster the creative
process
68. Similarly, this Court has repeatedly held that the overarching purposes of
the Copyright Act are twofold: promoting the public interest in the
encouragement and dissemination of artistic and intellectual works, and
justly rewarding the creator of the work. In the specific context of the
Internet, this Court commented:
Robertson v Thomson Corp, 2006 SCC 43, [2006] 2 SCR 363 at para 69.
Théberge v Galerie d'Art du Petit Champlain inc, 2002 SCC 34, [2002] 2 SCR
336 at paras 5, 30-31.
Society of Composers, Authors and Music Publishers of Canada v
Canadian Assn of Internet Providers, 2004 SCC 45, [2004] 2 SCR 427 at
para 40.
69. The fair dealing provisions in sections 29 to 29.2 serve to encourage the
creation of artistic and intellectual works by allowing certain uses of
copyright-protected material as part of the creative process. This
acknowledges the collaborative and interactive nature of cultural creativity
and creates “breathing space” in the copyright system by allowing for uses
of copyright-protected works that are fair and for purposes that lead to the
creation of new works.
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70. This Court has held that the exceptions to infringement found in the Act
are necessary to allow for creative innovation and to further the long-term
interests of society as a whole, namely the continued creation of new
works of art and intellect. These exceptions include the fair dealing
provisions.
Théberge v Galerie d'Art du Petit Champlain inc, 2002 SCC 34, [2002] 2 SCR
336 at para 32.
71. Professor Drassinower has suggested that the fair dealing exceptions
recognize that fair users of copyright are authors as well. The fair dealing
provisions allow users to copy protected works to the extent necessary to
engage in the creation of their own works. It is in this sense that fair
dealing is a “user’s right”:
The defence of fair dealing, then, permits the defendant to establish that,
in spite of the appearance of infringement as a result of the defendant’s
act of substantial reproduction, the defendant’s work is after all his own,
not truly a copy of the plaintiff’s. A finding of fair dealing means precisely
that the act of substantial reproduction that gives rise to the fair dealing
inquiry fails to mature into a finding of infringement. The defence gives
the defendant the opportunity to show that his substantial reproduction of
the plaintiff’s work does not negate his own authorship. Fair dealing
stands for the proposition that responding to another’s work in one’s own
does not mean that one’s work is any less one’s own. Thus the
defendant who makes out the fair dealing defence is an author in
her own right. It is as author that the defendant is a fair user.
Euro-Excellence Inc v Kraft Canada Inc, 2007 SCC 37, [2007] 3 SCR 20 at
para 79.
72. The fair dealing exceptions exist to facilitate those authorial actions of
copyright users that are fair and necessary to further the public interest.
The actions of the Online Music Services in communicating previews of
musical works are neither acts of authorship nor are they necessary to
promote the public interest.
73. Other than “research and private study” in section 29, the other fair
dealing provisions allow fair dealing for the purposes of “criticism and
review” and “news reporting.” These additional purposes share a common
element: the activities they encourage are those that promote the public
interest.
74. Criticism and review involves the exercise of creative effort: the critic or
reviewer adds his or her own expression of skill and judgment to passages
of another work copied legitimately, thus creating a new literary work. By
exempting criticism and review from copyright infringement liability, the Act
promotes the public interest in both freedom of expression and the
dissemination of new creative works.
76. The Appellant submits that the term “research and private study” in
section 29 ought to be interpreted to include uses that contribute to the
creative process in ways similar to those in sections 29.1 and 29.2.
77. Research and private study are different from criticism, review and news
reporting in that the former terms do not describe the action of creating
new works directly. However, a person engaging in either research or
private study has as his goal the cultivation of a mental environment that is
conducive to the creative process. Research and private study are thus
often preliminary steps in the creation of new works of skill and judgment.
78. The Appellant submits that the proper definition of the term “research” as it
is used in section 29 must be bipartite: the definition will include the
searching element identified by the Court of Appeal, but the goal of this
search must be to fuel the creative process.
79. This bipartite definition of "research" is entirely consistent with this Court's
decision in CCH, where the research at issue had as its goal the creation
of new works of skill and judgment in the form of opinions, court
submissions and legal advice.
80. In CCH, this Court considered the copies of various legal publications
made at the request of legal researchers to be made “for the purpose of
research” because they were made as part of the legal research process.
This Court was careful to distinguish between the act of copying itself and
the research that the copying facilitated:
the research required to carry on the practice of law. In sum, the Law
Society’s custom photocopy service is an integral part of the legal
research process, an allowable purpose under s. 29 of the Copyright Act.
[emphasis added]
81. The key distinction to be made between the facts of this case and those in
CCH is the role that the infringing activity plays in the dealing. In CCH, the
legal professionals were requesting copies for the “purpose of research on
a specific legal topic” and the photocopy service formed an “integral part
of the legal research process,” a process which results in the creation of
new works of skill and judgment.
82. The music previews communicated by the Online Music Services are not
research in and of themselves: unlike the copies made for lawyers in
CCH, the communication of previews is not a necessary condition to the
creation of new artistic or intellectual works; nor do previews form part of
any research process that could lead to the creation of such works.
Consumers listening to music previews are not engaging in acts of
authorship, they are merely shopping. Previews are merely a convenient
tool that facilitates the shopping process and assist the Online Music
Services in their marketing efforts.
83. The role that fair dealing plays in the creative process is also recognized
in U.S. jurisprudence through the common law requirement in that country
that fair uses be transformative uses.
84. Although there are differences between Canadian and American copyright
legislation, the Federal Court of Appeal in the CCH case recognized that
Canadian courts may "find some assistance in examining the experience
in the United States."
CCH Canadian Ltd v Law Society of Upper Canada, 2002 FCA 187 at para
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148 citing Estey J in Compo Co Ltd v Blue Crest Music et al, [1980] 1 SCR
357 at 367.
85. U.S. courts have consistently held that for a use to fall within the ambit of
fair use, it must not be a mere substitute for the original work. That is, the
use must be “transformative.”
86. Recently, the New York District Court considered whether the
transmission of music previews as a marketing tool to sell musical
ringtones for mobile phones could be considered fair use. The Court
concluded that the “applicant’s use of previews, for the purpose of
allowing its customers to sample a musical ringtone before purchasing it,
cannot fairly be described as ‘criticism, comment, news reporting,
teaching… scholarship, or research.’” The Court also held that the use of
previews to sell ringtones was not a transformative use:
United States v ASCAP, 599 F Supp 2d 415; 2009 US Dist LEXIS 31999;
2009-1 Trade Cas (CCH) P76, 512 at p 10 [emphasis added].
87. In reaching this conclusion, the Court distinguished the case of Kelly v
Arriba Soft. In Kelly, the defendant had created a search engine that
crawled the world wide web for images and then built a searchable
catalogue of smaller, “thumbnail” versions of those images. The Court
held that the database of thumbnails served a transformative purpose and
that the thumbnails were a fair use of the plaintiff’s copyright images. The
Court’s reasoning focused on the benefit that the Defendant’s service
provided the public.
88. In ASCAP, the Applicant argued that the thumbnails in Kelly were simply
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advertisements for the underlying full-size images and that its previews of
ringtones served the same purpose. The Court distinguished Kelly as
follows:
The [Ninth] Circuit noted that "Arriba was neither using Kelly's images to
directly promote its web site nor trying to profit by selling Kelly's images."
Kelly, 336 F.3d at 818. While Arriba's search engine helped users
navigate a sea of information including images already publicly
available on the internet, applicant's previews merely allow users to
sample selections of a database of copyrighted information,
collected, organized and provided to users by applicant. It is
difficult to characterize applicant's use of previews as serving a
"public benefit" when the previews' purpose is to benefit applicant
by facilitating sales of its own product. Again, applicant fails to
establish that its use of ASCAP music serves a transformative use under
the fair use doctrine. [emphasis added]
United States v ASCAP, 599 F Supp 2d 415; 2009 US Dist LEXIS 31999;
2009-1 Trade Cas (CCH) P76, 512 at pp 10-11.
89. Under the Canadian regime, the public benefit to be gained from fair
dealing is the same public benefit fostered by the Act itself: encouraging
the creation of new works. The requirement in the US jurisprudence that
the use be transformative is consistent with the intent behind limiting the
purposes for which the defence of fair dealing is available pursuant to
sections 29 to 29.2 of the Canadian Act. Both the Canadian and US
doctrines require the person claiming the exemption to be engaged in an
act of authorship.
90. Like the ringtone retailers in ASCAP, the Online Music Services are not
creating anything new by offering free music previews. The Online Music
Services are simply allowing their customers to sample selections of a
database of copyright-protected information that is collected, organized
and communicated to consumers by the Services.
93. Section 30.2 exempts libraries, archives and museums from liability for
making copies of articles in periodicals and older newspapers if those
copies are made for the purpose of “research or private study.” Section
30.2 provides, in part, as follows:
Restriction
94. This section was clearly intended to apply only to copies made in pursuit
of research that fosters the creation of new works and not simply “the
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95. All library patrons are searching carefully for a specified thing. If this
definition were applied to the term “research” in section 30.2, the section
would become redundant; a library, archive or museum would be
authorized to copy all works of the types enumerated in paragraphs 2(a)
and (b) for all patrons. The qualifier that the copy be used “for research or
private study” would be meaningless. This cannot be Parliament’s
intention for this section.
96. For the reasons set out above, the Appellant submits that the proper
meaning of the term “research” in section 29 of the Act is, “the systematic
investigation into and study of materials and sources in order to establish
facts and reach new conclusions.” This definition is consistent with the
plain meaning of the term “research” and it is consistent with the purposes
of both section 29 in particular and the Act as a whole.
The Concise Oxford English Dictionary, 10th ed, sub verbo "research".
97. The Appellant further submits that when the Online Music Services
communicate previews of musical works to consumers to assist those
consumers in searching for a musical track to purchase, neither the Online
Music Services nor the consumers are engaged in research.
98. This Court has called fair dealing a “users’ right.” But, as the text of the Act
and this Court’s jurisprudence reveal, this “user’s right” is not an unlimited
right to use. The limited purposes for which the fair dealing defence is
available and this Court’s guidance on determining whether a particular
dealing is fair circumscribe the defence of fair dealing and restrict its
application to those circumstances where the user herself is participating
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99. Professor Scassa explains that fair dealing is not an unlimited right to use,
but rather a right to participate in the uses the Act was intended to
encourage:
The fair dealing exceptions in ss. 29, 29.1 and 29.2, for example, give a
strong indication that they exist so as to ensure that freedom of
expression is not unduly curtailed by the exercise of an author’s
economic rights. We are permitted, so long as our dealing is fair, to
criticize or comment on works, to use works where they are relevant for
the reporting of news, and to carry out research and private study. The
interpretation of these sections should reflect not simply a right to
use, in general terms, but a right to engage intellectually, critically,
and creatively with existing works.
100. The decisions below have expanded the scope of the exception in section
29 from a “users’ right” into a “right to use, in general terms.” The
Appellant submits that this expansion is unwarranted. The actions of the
Online Music Services in communicating previews of musical works do not
engage intellectually, critically or creatively with existing works and
therefore do nothing to promote the public interest purposes of the Act.
101. Similarly, the customers of the Online Music Services do not “engage
intellectually, critically [or] creatively with existing works” when they listen
to previews. They are doing nothing more than engaging in a shopping
activity during which they identify and assess products for potential
purchase, as they do for a myriad of other products they may have an
interest in purchasing. But that process falls far short of any “research”
activity of the type contemplated by the Act.
C. Issue 2: The manner in which the Online Music Services deal with
SOCAN’s copyright musical works is not fair
Appellant submits that this use cannot qualify as “fair dealing” because the
manner in which the Online Music Services use the works in the
Appellant’s repertoire is not fair.
103. This Court in CCH set out the factors for determining whether a dealing is
“fair”: the purpose of the dealing, the character of the dealing, the amount
of the dealing, alternatives to the dealing, the nature of the works and the
effect of the dealing on the work.
104. The Appellant submits that a consideration of these factors with respect to
the communication of music previews reveals that the dealing at issue in
this appeal cannot be considered fair.
105. Like the Great Library in CCH, the Online Music Services do not conduct
research, but instead facilitate the research of their consumers. The Board
held that this entitled the Online Music Services to avail themselves of the
fair dealing exception:
ii. The character of the dealing: The Online Music Services are widely
distributing substantial parts of the musical works
107. In assessing the character of a dealing, courts must examine how the
works were dealt with. Making a single copy of a single work may be fair;
however, if multiple copies of works are being widely distributed, this will
tend to be unfair.
108. In this case, the record shows that the Online Music Services
communicate (distribute), on average, ten times the number of previews
as they do full-length musical works. Given the evidence before the Board
on the number of downloads communicated by the Services, this amounts
to CONFIDENTIAL of previews communicated over the 1996-2006 period
covered by the tariff. These previews are distributed to millions of
consumers across Canada.
iii. The amount of the dealing: The amount of the dealing is unfair
109. In CCH, this Court provided for a flexible application of the six fairness
factors and stated that each factor may be more or less relevant
depending on the factual context of the allegedly infringing dealing. The
Appellant submits that in the context of this appeal, the amount of the
dealing is especially relevant.
110. Unlike CCH, this case involves the dissemination of works over the
Internet, which allows for widespread distribution of content. The infringing
activity at issue in CCH was done using a restricted number of photocopy
machines located at one physical location and fax machines under the
control of the librarians. In this case, the protected communications occur
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112. The Board assessed the amount of the dealing by examining the ratio
between the length of a music preview and the length of the average
musical work in the catalogue of the Online Music Services. The Board
concluded as follows:
113. Despite the fact that there was no evidence before the Board on the
average length of a musical work, the Court of Appeal agreed with the
Board that this approach was reasonable and that it “considered the user’s
objective of researching a purchase.”
114. The Court of Appeal held that the use of music previews must be
evaluated from the consumer’s point of view:
We must consider previews from the point of view of the person for
whom they are intended: the consumer of the subject-matter of the
copyright. Their purpose is to assist the consumer in seeking and finding
the desired musical work.
115. The Appellant submits that both the Board and the Court of Appeal erred
in adopting a consumer-centred approach to assessing the amount of the
dealing. Rather, the dealing should be examined from the point of view of
the Online Music Services, who are the users of the copyright in the
musical works in the Appellant’s repertoire. The amount of the dealing
ought to be assessed from this perspective for two reasons: first, following
this Court’s guidance in CCH, fair dealing refers to a practice or system of
dealing as a whole; second, from a copyright liability perspective, it is the
Online Music Services who are using the Appellant’s musical works, by
communicating them to the consumer.
116. In CCH, this Court examined a situation where patrons of the Great
Library were able to make photocopies and request copies of copyright-
protected works. When this Court assessed the amount of the dealing in
CCH, it intentionally determined the amount from the perspective of the
Great Library, not the individual patrons:
117. Where fair dealing relates to a system of uses, it is an error to assess the
amount of the dealing by examining a single transaction within that
system. The Board erred by examining the amount of the dealing as a
ratio between a single preview and a single musical work despite having
concluded that the communication of previews was fair dealing on the
basis that the “practice and policies” of the Online Music Services were
“research-based and fair.”
118. An approach that examines the amount of the dealing in the aggregate is
also consistent with the manner in which the rights to the musical works
are administered. Pursuant to Tariff 22.A, the Online Music Services are
entitled to use the musical works in the Appellant’s repertoire on an
aggregate basis and there is no need for the licensing of any work on an
individual basis.
119. Furthermore, Tariff 22.A governs the relationship between the Appellant
and the Online Music Services and does not apply to individual consumers
of the Services. Individual consumers are not liable to the Appellant for
listening to a preview. It is the Online Music Services who must avail
themselves of the fair dealing exception. Therefore, it must be from the
perspective of the Online Music Services that the amount of the dealing
ought to be assessed.
120. Considered from this aggregate perspective and measured on the basis of
the amount of music communicated to consumers, music previews
represent 125% of the music sold by way of a purchased download. This
figure is based on an assumed length of four minutes for an average
musical work, the evidence that ten previews are communicated per
purchase and a preview length of 30 seconds (10 x 30 seconds = 5
minutes = 125% of 4 minutes).
121. In CCH, this Court suggested that a dealing may be unfair if it involves a
series of multiple copies:
…the dealings might not be fair if a specific patron of the Great Library
submitted numerous requests for multiple reported judicial decisions
from the same reported series over a short period of time…
122. The Appellant submits that the amount of the dealing cannot possibly be
considered fair when it involves a series of multiple copies that amount to
more than 100% of the legitimate, licensed use of the works in the
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Appellant’s repertoire.
124. On the evidence that was before the Board, the average course of
“research” engaged in by each consumer involves ten previews and one
purchased download. It is inconsistent, then, for the Board to assess the
fairness of the amount of this dealing by reference to the ratio between
one preview and one download.
125. If the proper ten-to-one ratio is used, the amount of the dealing involved in
an average course of “research” is five minutes. This constitutes 125% of
the amount of music involved in an average four-minute full-length musical
work.
126. Even if the Federal Court of Appeal was correct in measuring the dealing
individually, the Appellant submits that the amount of the dealing in this
case is unfair. In CCH, this Court evaluated the access policy of the Great
Library to determine whether the amount of the dealing with individual
works was reasonable:
The Access Policy states that the Great Library will typically honour
requests for a copy of one case, one article or one statutory reference. It
further stipulates that the Reference Librarian will review requests
for a copy of more than five percent of a secondary source and that,
ultimately, such requests may be refused. This suggests that the Law
Society’s dealings with the publishers’ works are fair. Although the
dealings might not be fair if a specific patron of the Great Library
submitted numerous requests for multiple reported judicial decisions
from the same reported series over a short period of time, there is no
evidence that this has occurred.
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128. The Appellant submits that, regardless of whether the dealing is assessed
on an individual or aggregate basis, the amount of the dealing involved in
this case is manifestly unfair.
129. Apple’s witness recognized that previews are not the only feature of the
iTunes store that is designed to allow consumers to find, identify and
purchase music. Apple Vice President, Eddie Cue, testified, “[w]hat we try
to do is to give them [the consumers] as many ways possible to find the
content that they are looking for.” Communicating free previews is only
one of those ways. The iTunes store also provides album artwork, textual
descriptions and user-generated album reviews to assist the consumer to
find content.
130. The true objective of the Online Music Services in offering previews is to
increase sales of musical works. Therefore one clear alternative to offering
previews is for the Online Music Services to increase the amount spent on
advertising.
132. Apple's evidence before the Board was that previews are "a marketing tool
[that] should be understood primarily as eliminating consumers' risk of
purchasing the 'wrong song'." Similarly, Alastair Mitchell, CEO of the
Online Music Service, Puretracks, testified that the purpose of previews is
to allow the consumer to verify her purchase. This purpose may be
achieved simply by offering consumers the ability to return a song and be
reimbursed the purchase price. In fact, Apple already allows returns to the
iTunes Store.
133. The Appellant submits that, rather than implement these alternatives, the
Online Music Services have chosen to save on costs by offering for free
something that is not theirs to give away: substantial portions of the
Appellant’s musical works.
v. The nature of the works: The musical works are published and their
use is subject to the collective administration regime
134. In CCH, this Court considered the nature of the work to be a factor
relevant to determining whether the dealing is fair. Where the nature of the
work is such that fair dealing increases the public dissemination of the
work, then the dealing is more likely to be fair:
135. The converse of this premise is that reproducing a work that, by its nature,
is already capable of legitimate wide dissemination may be less fair
because, in that case, the dealing does less to advance the purposes of
copyright law.
136. The works in question in this case are accessed and disseminated
pursuant to the collective administration of copyright regime set out in the
Act. In the case of SOCAN, this regime is compulsory and ensures that
music users have unfettered access to SOCAN’s repertoire, as long as
they pay the fees set out in the applicable tariffs approved by the Board.
Under this system, it is impossible for SOCAN to restrict or hinder the
legitimate dissemination of its musical works. Once the Board certifies a
tariff for a certain use and the terms and conditions of the tariff are met,
SOCAN has no right to restrict access to or use of any of its works.
137. Accordingly, in this case, the nature of SOCAN’s works and the
compulsory nature of the regime to which they are subject already ensure
the wide public dissemination of the works and there is no need to resort
to the fair dealing exception for that purpose. Consequently, based on the
guidance of this Court, the Online Music Services' dealing with the
Appellant’s musical works should be seen as unfair.
vi. The effect of the dealing on the work: There is no evidence in the
record to support the Board’s conclusion that the Online Music
Services’ dealing has no negative effect on the Appellant’s works
138. When examining this factor, the effect of the dealing on the market for the
original work is relevant. If the reproduced work is likely to compete with
the market of the original work, this may suggest that the dealing is not
fair.
139. The Online Music Services argued before the Court of Appeal and in
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response to the Appellant’s application for leave in this appeal that this
factor should weigh in their favour because offering free previews actually
positively affects the market for the Appellant’s works. There are a number
of problems with this argument.
140. First, because the fair dealing issue was raised by the Board on its own
initiative after the hearing, there was no evidence on the record that would
tend to establish this assertion. If the use of music previews increases the
online sale of full-length musical works, that fact was not proven before
the Board.
141. Music previews can be used for a number of reasons that will not
necessarily increase the sale of protected works. Consumers may access
any number of previews, whether or not they have any intention of making
a purchase. Those who access Online Music Services with the intention
of spending a set amount of money on music will do so irrespective of
their use of previews. Yet others may use previews to help them choose
one work over another but that, in and of itself, may not lead to “additional”
sales.
142. Ultimately, the Online Music Services’ argument that offering free
previews benefits the Appellant through increased sales is paternalistic.
The Appellant is in the best position to assess the most efficient and
valuable means of marketing its musical works, including whether it is in
the best interests of its members to bear the cost of communicating free
previews to consumers or to charge a fee to the Online Music Services for
that use.
The Berne Convention for the Protection of Literary and Artistic Works
1886, Art 9(2).
144. Clearly, there is a market for music previews, as evidenced by the Online
Music Services’ demand for them, and the recognition in the United States
that the owners of previews are entitled to negotiate a fee for their use.
The Board’s application of the fair dealing exception to deny the Appellant
a tariff for music previews conflicts with the normal exploitation of the
Appellant’s works by negating its ability to “negotiate”, before the Board,
compensation for that entire category of use. This result is particularly
unfair in the light of the Board’s acknowledgement that “Some users may
use previews in a manner that does not constitute fair dealing”.
145. Before the Copyright Board, SOCAN had asked for a higher tariff rate to
be applied to Online Music Services that offer music previews. The
Appellant submits that the communication of previews of musical works in
the Appellant’s repertoire is not fair dealing pursuant to section 29 of the
Act.
146. To the contrary, the use of music samples by online retailers to promote
the sale of music does not further the purposes of the Act and is precisely
the type of commercial activity that should give rise to compensation for
the creators of those musical works.
147. Consequently, a tariff is required for the use of music previews and the
Board should proceed to hear the parties as to the value of this use.
148. The Appellant requests the costs of this appeal and in the court below.
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(a) setting aside the decision of the Federal Court of Appeal; and
___________________________
Gowling Lafleur Henderson LLP
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Authority Citing
Paragraphs
Case Law
1 Bell Canada v Society of Composers, Authors and Music 50
Publishers of Canada, 2010 FCA 220.
5 CCH Canadian Ltd v Law Society of Upper Canada, 2004 57, 80, 81,
SCC 13, [2004] 1 SCR 339 [CCH]. 103, 106,
107, 109,
116, 117,
121, 126,
134, 138
Secondary Sources