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The real issue is the nature of an approved tariff, not the number of infringing copies  I fully agree with Access Copyright that the real issue is whether an approved tariff (as far as educational institutions are concerned) is merely a license, which therefore only binds an institution that has chosen voluntarily to operate under it, or can it become mandatory on those institutions irrespective of whether they have chosen to operate under it or not. I also fully agree that under my interpretation, the number of infringing copies that an institution might be held liable for is irrelevant.  If I understand its objection to my draft question correctly, Access Copyright takes issue with the phrase “a single infringing reproduction”. It claims that my proposed question raises a hypothetical fact scenario whereby an institution makes no more than a single infringing reproduction. I agree that if understood in this way, the question may not fully present a clear distinction between the “voluntary” vs. “mandatory” interpretations. My proposed question, however, meant to refer to “one or more infringing reproductions”.  I disagree, however, with Access Copyright’s suggestion that the “single reproduction” issue is a red herring, and I reject its claim that it is totally unrelated to the current proceedings. While I may be credited for coining the term “single reproduction theory”, I disclaim any authorship in the theory itself.  Rather, credit to the theory itself should be given to the Board, which has previously expressed it in its August 18, 2011 Ruling, and even more explicitly (and in direct reference to the certification of the current proposed tariff) in its submissions to the Federal Court of Appeal.1 The Board has also expressed the theory in para. 4 of its decision from My 29, 2013 to approve an interim tariff for the K-12 sector.2  Credit is also due to Access Copyright for explicitly endorsing this theory in its filings to the Federal Court in its action against York University to collect the royalties specified in the
Cases A-339-11, A-395-11, AUCC v. Access Copyright, Memorandum of Fact and Law of the Intervener The Copyright Board of Canada, March 1, 2012 (FCA), para 23 (“Any institution that performs a single unlicensed, protected use of the Access repertoire anytime between January 1, 2011 and the date when the final tariff is certified will need to comply with the final tariff” (emphasis added)). 2 Reprographic Reproduction, 2010-2015, Statement of Royalties to be Collected by Access Copyright for the Reprographic Reproduction, in Canada, of Works in its Repertoire, Interim Decision of the Board, May 29, 2013, para 4 (“The [educators’] decision to cease paying royalties under the tariff supposes one of two things, in respect of the 200 million or more copies that the Board found to trigger a royalty. Either teachers no longer make any such copies, or all such copies are no longer compensable, as a result of recent changes to the Act or of recent decisions of the Supreme Court of Canada, or because compensable copies are now licensed through other channels” (emphasis added)). There is, of course, a third possibility: that the K-12 edicators have chosen not to take advantage of the approved licensing scheme and therefore are not obliged to pay the royalties under the tariff.
3 Interim Tariff approved in this case.3 It is also the theory that Access Copyright relies on in para. 3 of its Statement of Case in the current proceedings (“any such copying constitutes compensable copying which … is subject to the tariff to be certified by the Board”), unless the word “any” in that paragraph means something else than “one or more”. Therefore, it can hardly be said that this theory it totally foreign to the current proceedings, or that it is me, rather than Access Copyright who has raised this theory.4  Moreover, I note that while Access Copyright appears to be very pedantic by focusing on my use of the terminology “single”, in contrast to such terminology as “any copies”, or “made … a non-exempt reproduction of one … work”, which it has used before, it actually does not deny its and the Board’s earlier pronouncements of the theory, does not repudiate it, and does not appear to be offering any alternative theory.  I agree, however, that to the extent that using the phrase “making of a single infringing reproduction” may not fully capture the issue that requires determination, the question should be framed differently. Therefore, I would propose the following question (with highlighted changes): Does a tariff approved under section 70.15(1) of the Copyright Act, concerning the reproduction of literary works by an educational institution, entitle the collective society that filed the tariff to collect the royalties specified therein only from an educational institution that has agreed or offered to pay those royalties, or is the collective society entitled to collect the royalties from any educational institution that is liable for the making of a single one or more infringing reproductions of any work in the collective society’s repertoire, as well as and is it further entitled to force such institution to comply with the terms and conditions set forth in the tariff?  It seems to me that these changes adequately address Access Copyright’s objections and present a clear question for determination. I would also submit that framed in this way, the question is preferable to the one proposed by Access Copyright, for reasons that I will address below.
See para 15 of Access Copyright Statement of Claim, in Case T-578-13, Access Copyright v. York University, Apr. 8, 2013 (FC) (“The plaintiff claims that the defendant is, and has been since January 1, 2011, obligated to comply with the terms of the Approved Tariff if, subsequent to that date, one Educator made or authorized the making of a non-exempted reproduction of one copyright-protected work within the Repertoire” (emphasis added)). 4 Access Copyright has also relied on this theory in its Application for an interim approved tariff in respect to the Access Copyright Educational Institutions Tariff (2013-2015) from April 8, 2013, available at http://www.scribd.com/doc/134779087/2013-04-08-Interim-Tariff-Application-K-12-1, at p 4 (“each Ministry and School Board [that has stopped paying royalties] would have to nevertheless establish to the Board’s or a Court’s satisfaction that each school may avail itself of this interpretation [of the Copyright Act] in respect to each copy of a published work in Access Copyright’ s repertoire that teachers continue to make” (emphasis added)).
4 II.  Deficiencies in Access Copyright’s proposed question Access Copyright proposes the following question: Is the tariff that will be certified by the Copyright Board under section 70.15(1) of the Copyright Act in relation to the proposed statement of royalties that was filed by Access Copyright on March 31, 2010 for the reproduction by post-secondary educational institutions (“Institutions”) in Canada of works in Access Copyright’s repertoire (“Repertoire”) enforceable by Access Copyright in a court of competent jurisdiction against an Institution that uses works in the Repertoire without authorization.  While I agree that the question attempts to capture the essence of the issue that requires determination, it uses words and phrases that are either unnecessarily ambiguous, or introduce additional and unnecessary controversies. There are also problems with Access Copyright’s use of the terms “uses”, “authorization”, and “enforcement”, and a few others minor issues. I will address these problems in turn; beginning with the phrase “uses works”. III. “Uses works” – how many?
 The phrase “uses works” does not fully capture the distinction between “voluntary” and “mandatory” and like “making a single infringing reproduction” may be divert attention away from the real issue.  S. 68.2(1) provides that “a collective society may, … collect the royalties specified in the tariff”, but it does not specify “from whom” the collecting society may collect the royalties, and “upon what”? Under my interpretation the answer is “from an institution that has chosen voluntarily to become a licensee and operate under the terms of the approved tariff, and upon offering to pay the royalties specified in the tariff, pursuant to s. 70.17.”  If I understand Access Copyright’s view correctly, its answer appears to be “from any institution that has used works from its repertoire” and “upon using such works without authorization.” Since Access Copyright has protested the use of “a single reproduction”, it is not clear whether it offers the plural form “works” to imply “one or more works”, “more than one work”, or perhaps a higher, but unspecified, threshold (e.g., “any number of work that is higher than X”). I submit that it would be preferable to frame the question in a way that would avoid ambiguity as much as possible. Since Access Copyright has not repudiated the earlier pronouncements of the “mandatory” view that have used the terms “any”, “one”, “single”, or “each”, and since it has not offered any other specified threshold, it seems to me that it suggests that “any” or “one or more”, or “at least one” would be acceptable. If that is the case, I am happy to agree to the change, and have modified my proposed question accordingly.
5 IV. The question should preferably use the Copyright Act’s terminology
 Access Copyright’s proposed question does not use the terminology of the Copyright Act. As a result, the proposed question is more ambiguous than it needs to be, and would require the parties to make unnecessary submissions on the meaning of those terms, instead of focus on the “voluntary” vs. “mandatory” issue. For example, Access Copyright proposes the phrase “uses works”, but there is no exclusive right to “use” works in the Act, a tariff can only pertain to exclusive rights under s. 3 of the Act,5 and the current proposed tariff pertains only to the reproduction right. Therefore, the question should avoid the term “use”, and utilize “reproduce” in its stead.  Likewise, the phrase “uses works … without authorization” is ambiguous and overly broad. First, “authorization” is one of the exclusive rights under s. 3, but the concept that Access Copyright refers to is infringement. “Infringement” is a well-defined concept, and s. 27(1) uses the phrase “without the consent of the owner of the copyright”, not “without authorization”. Moreover, it is not clear whether the proposed question means “uses works without Access Copyright’s authorization, or without the consent of the copyright owner”, which are not necessarily the same thing.6  Second, no consent is required to “use” works administered by Access Copyright by reading them, for example; no consent is needed to “use” a work for copying a non-substantial part thereof; no consent is required to “use” a work in order to copy facts, ideas, or any nonoriginal expression; and no consent is required to “use” a work when the use would be fair dealing, or otherwise non-infringing. Therefore, the phrase “makes infringing reproduction(s)” is preferable because it has a precise meaning in copyright law and avoids these ambiguities.  The phrase “enforceable … in a court of competent jurisdiction” is similarly problematic, because s. 68.2(1) does not say that a collecting society may enforce an approved tariff. It only provides that the collecting society “may… collect the royalties specified in the tariff and, in default of their payment, recover them in a court of competent jurisdiction.” Notably, s. 68.2(1) only mentions collecting the royalties and recovering them, and does not mention compliance with any other terms and conditions. While I believe that it may be prudent not to limit the reference question to the mere collection or recovery of royalties, but also to address the question of compliance with any other term and condition, which may inevitably arise, I also think that it would be preferable to adhere to the statutory language when possible and distinguish between collecting the royalties and complying with any other terms and conditions.
See Copyright Act, s. 70.1(a). Consider, for example, a law professor downloading a journal article from Westlaw. The downloading has been authorized by Westlaw, but Westlaw may or may not have obtained a license from the copyright owner to authorize the reproduction. If the copyright owner has not authorized Westlaw to authorize the reproduction, then the reproduction may have been authorized by Westlaw, but nonetheless had been made without the consent of the copyright owner.
6 V. Other problems
 I wish to highlight two additional problems in Access Copyright’s proposed question. The first is limiting the question to this specific proposed tariff. If the purpose is somehow to obtain a determination from the Federal Court of Appeal that would be strictly limited to this proposed tariff, but would not settle the legal issue for other proposed tariffs (such as the 20142017 proposed tariff), then the utility of the reference would be seriously diminished. I note that Access Copyright agrees with UofT (who signed a license for the 2011-2013 period and therefore will not have to pay any royalties under the tariff for that period regardless of whether the tariff is voluntary or mandatory) that resolving the question is desirable, and therefore I believe that a more general language would be preferable.  Lastly, Access Copyright has proposed the phrase “the tariff that will be certified”. This is consistent with its view that the Board “must” certify the tariff. However, the immediate issue before the Board is not whether it must certify the proposed tariff. Rather, the task at hand is phrasing a question about the effect of the tariff if and when approved, and in any event, the assertion that the Board must certify the tariff is clearly ill founded. As the Federal Court of Appeal held in SOCAN v. Bell Canada,7 the Board’s mandate is “to approve and certify a fair and reasonable tariff” while balancing “the competing interests of copyright holders, service providers and the public.”8 The Court recognized that under some circumstances it would be unreasonable for the Board to certify a tariff. This may happen, for example, “in the absence of the necessary probative evidence, on mere guesses, speculations and approximations” and especially if the tariff were to have a retroactive effect.9 It should go without saying that the Board should not and cannot certify a tariff when it lacks jurisdiction to so.10 All or some of these issues may be raised in the Objectors’ Statement of Cases, including that under the current circumstances the Board must not certify a tariff. It would be counter-productive to include in the reference question a controversial issue that is not part of the question and is not required for answering it.
2010 FCA 139 (CanLII), http://canlii.ca/t/29z9n Ibid, para 25. 9 Ibid, para 26. 10 Canadian Private Copying Collective v. Canadian Storage Media Alliance, 2004 FCA 424 (CanLII), http://canlii.ca/t/1jgv9, Apple Canada Inc. v. Canadian Private Copying Collective, 2008 FCA 9 (CanLII), http://canlii.ca/t/1vcx1. The Board itself made this point with respect to a proposed tariff for a performance or communication right for sound recordings incorporated into the soundtrack of cinematographic works, and was upheld in this instance by the Supreme Court of Canada, Re:Sound v. Motion Picture Theatre Associations of Canada, 2012 SCC 38 (CanLII),  2 SCR 376, http://canlii.ca/t/fs0vc.
7 VI. Why the answer to the question can be decisive of important issues before the Board or the courts  Lastly, I would like to refer to Access Copyright’s contention that “Even if the Board referred the question … and the Court agreed to hear and determine the question, an answer to the question will not put to an end the tariff proceedings or be decisive of any matter before the Board (or any court).” To support this claim, Access Copyright offers an explanation that provides an excellent opportunity to clarify why I have argued in my Nov. 6 letter that the a reference may effectively render the current proceedings moot, and why an adjournment pending the determination of the question is justified.  To support this claim, Access Copyright argues that “irrespective of the decision on a reference, a certified tariff will be required since its terms will apply retroactively to the 139 Institutions that have operated under the Interim Tariff. Further, 30 Institutions have advised Access Copyright pursuant to section 70.17 of the Act that, if during the term of the certified tariff the Institution makes copies of any Repertoire Work, as that term is defined in the tariff, for which the Institution is obliged to pay a royalty, the Institution will pay the royalty specified in the certified tariff.”  If I understand this point correctly, Access Copyright argues that even if it is determined that it can only collect royalties from institutions that have chosen to become licensees under the terms of an approved tariff, there still exist some institutions that have elected to operate under the terms of the approved tariff,11 and therefore the Board should proceed to approve the tariff, irrespective of the determination of the question on reference.  It seems to me that this may be another point of agreement between Access Copyright and myself. I agree that if the answer from the reference is that the tariff is voluntary, and if Access Copyright would only be entitled to collect the royalties specified in the tariff from those institutions that have agreed or offered to pay them, then the current proceedings may not be rendered completely moot.  But if that were the case then I would not object to the approval of the proposed tariff, and I would further submit that the grounds for any remaining objection would be significantly narrower than they ought to be if the tariff were held to be mandatory. Likewise, all the problems arising from approving a tariff in the absence of effective objections would be much less severe, and much easier to resolve. This is precisely why I requested to refer the question to the Federal
I cannot speak on behalf of the institutions that Access Copyright refers to, and I have not seen the letters that it mentions. However, I agree that if an institution that had sent such a letter, or has operated under the Interim Tariff is indeed a “a person who has … offered to pay the royalties specified in an approved tariff” within the meaning of s. 70.17, and if those letters should indeed be construed as making such unqualified an offer, then Access Copyright would be entitled to collect the royalties and therefore, with respect of those institutions, the case may not be rendered moot. Nevertheless, the proceedings would be simplified significantly.
8 Court of Appeal and to adjourn the current proceedings pending the final determination of this question; there is no reason for me at this point to object before the Board to a tariff that is binding only on institutions that have chosen to operate under it.  I believe that Access Copyright’s agreement to resolving the question of the effect of the tariff by way of a reference, its request to consolidate the two tariff proceedings, and the letter from the Provost of the University of Toronto supporting the reference, all constitute new circumstances that not only justify making the proposed reference, but also warrant revisiting the Board’s earlier decision to proceed without any adjournment or stay.  I do not see how it can be fair to the remaining objectors, who are all acting pro bono, to be required to prepare for an extremely complicated factual and legal case (if its outcome is mandatory) when even Access Copyright seems to agree that the main issue requires a definitive ruling from the Federal Court of Appeal. Access Copyright’s last minute and surprising request for the consolidation of two tariff hearings pushes the notion of a February hearing well over the brink of procedural unfairness, in any event.  To reiterate my earlier point, if the “mandatory tariff” theory is determined definitively to be incorrect and the question that I pose for reference is answered to my satisfaction, the hearing will “effectively” be moot and finished as far as I am concerned, because there will no longer be any reason for my involvement. Though I cannot and do not speak for others, I expect that the other objectors might agree. It can also be expected that other interested parties, who might otherwise be affected by the tariff and would have standing to seek judicial review, would find no reason to do that. The reason is simple: since many institutions believe that there are more cost-effective ways for them to comply with the Copyright Act than obtaining a license from Access Copyright or operate under the tariff, it would really not matter what amount the Board sets or what terms and conditions it approves. If they find the terms of the approved tariff more attractive than the other alternatives they would offer to pay the approved royalties, and if they find the other alternatives more attractive they would choose them.  Therefore, I formally request a stay of the current hearing set to begin on February 11, 2014, including all the forthcoming submission deadlines, pending a final determination by way of reference to the Federal Court of Appeal pursuant to s. 18.3 of the Federal Courts Act, as stated below.  Naturally, I would welcome any attempt that this reference be heard on an expedited basis, albeit allowing sufficient time for considering to whom formal notice of this reference should be given under section 322 of the Federal Courts Rules and for providing such notice. I believe that the record required by the Court would be very short and simple, and I note that Access Copyright has not disputed any of the facts that I mentioned in my request. Needless to say, I would be happy to provide specific suggestions in this regards, should the Board request my assistance.
9 VII. Conclusion
In light of the above, I respectfully suggest that the Board: • Issue an order referring the following or a substantially similar question to the Federal Court of Appeal: Does a tariff approved under section 70.15(1) of the Copyright Act, concerning the reproduction of literary works by an educational institution, entitle the collective society that filed the tariff to collect the royalties specified therein only from an educational institution that has agreed or offered to pay those royalties, or is the collective society entitled to collect the royalties from any educational institution that is liable for the making of one or more infringing reproductions of any work in the collective society’s repertoire, and is it further entitled to force such institution to comply with the terms and conditions set forth in the tariff? • Set out a schedule as soon as possible for a process in which the parties could make any other necessary submission about wording of the question to be referred, the factual basis that is necessary for its resolution, and the material to be put before the Court, as well as to consider suggestions from the remaining parties as to whom formal notice of this reference should be given under section 322 of the Federal Courts Rules, and on other procedural matters. Issue an order adjourning the current proceedings pending the Board decision with regard to the requested reference and to the consolidation of the 2014-107 proposed tariff, and staying the proceedings pending the final determination of the question on reference, should the Board decide to refer it.
Digitally signed by com.apple.ubiquity.peeruuid.6097A754-62A9-4043-960C-94CF129DA 2EF DN: cn=com.apple.ubiquity.peeruuid.6097A754-62A9-4043-960C-94CF129DA 2EF, c=CA Date: 2013.11.29 16:43:27 -05'00'
Ariel Katz CC: Randall Hofley Nancy Brooks David Fewer Sean Maguire