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Date: 20140730

Docket: T-578-13
Toronto, Ontario, July 30, 2014
PRESENT: Case Management Judge Kevin E. Aalto
BETWEEN:
THE CANADIAN COPYRIGHT LICENSING
AGENCY ("ACCESS COPYRIGHT")
Plaintiff/
Defendant by Counterclaim
and
YORK UNIVERSITY
Defendant/
Plaintiff by Counterclaim
ORDER
UPON MOTION dated the 20
th
day of February 2014 on behalf of the Defendant/
Plaintiff by Counterclaim, York University (“York”), for:
1. An Order in the form attached to the Notice of Motion as Schedule “A” bifurcating the
issues in this action, such that this action proceeds in two phases, as follows (described generally
below and set out in greater detail in Schedule “A”);
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(a) Phase I – Documentary and oral discovery and all other steps up to and including
a trial or other determination of all of the issues in the action except the Phase II
Issues (defined below). The issues in Phase I shall include:
(i). all issues relating to the 87 works identified in Schedule B to the
Statement of Claim (the “Schedule B Works”), including;
(A) the alleged activities set out in paragraphs 16 and 17 of the
Statement of Claim allegedly engaged in by the Five Individuals
identified in paragraph 17 (the “Five Individuals”); and
(B) whether Access Copyright is entitled to any relief in connection
with such activities; and
(ii). all issues arising from paragraph 25 of York’s Statement of Defence and
Counterclaim.
(b) Phase II – If necessary, or to the extent necessary, depending upon the outcome of
Phase I, determination of the Phase II issues consisting of all of the issues in this
action relating to works other than the Schedule B Works (the “Phase II Issues”).
For greater certainty, the Phase II issues shall include all issues arising from
paragraph 20 of the Statement of Claim, including whether Access Copyright is
entitled to any relief in connection with the alleged reproduction and authorization
of reproduction referred to in that paragraph.
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2. In the alternative to paragraph 1, an Order bifurcating the issues in this action in a
manner and form this Honourable Court considers just.
3. Costs of this motion payable to York.
4. Such further and other relief as York may be entitled to and this Honourable Court
considers just.
This is a case that cries out for a bifurcation order. While the parties have diverging
views on the issue of bifurcation, it is my view that a bifurcation order can be constructed which
does not prejudice the substantive rights of either party on a go forward basis.
In essence this claim concerns whether or not the Defendant/Plaintiff by Counterclaim
(York) is liable for payments to the Plaintiff/Defendant by Counterclaim (Access Copyright), a
copyright collective, pursuant to an Interim Tariff issued by the Copyright Board of Canada.
While York had previously been a party to a licence agreement with Access Copyright to make
copies of copyright protected works in Access Copyright’s repertoire, since September 1, 2011,
York has not paid fees pursuant to the Interim Tariff which has resulted in this action being
brought.
Access Copyright has alleged the improper copying of 87 specific works and has
identified five specific educators. However, this appears from the Claim to be but the tip of the
iceberg as there are allegations relating to the unspecified copying of a large volume of
unspecified works. It is with respect to this large volume of unspecified numbers of works that
the York bifurcation is intended to address. One of York’s main pleaded defences is that of fair
dealing and the Fair Dealing Guidelines which York has developed and which it alleges it
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follows. Thus, in Phase I of York’s proposed bifurcation order, Phase I would address the 87
works and the five known educators. It would also address the propriety of York’s Fair Dealing
Guidelines and the applicability of the Interim Tariff.
Access Copyright opposes the bifurcation order primarily because of prejudice which it
alleges it will suffer in being able to assert its case if it does not have discovery relating to the
many educators copying work and information about the works which have been copied. Access
Copyright argues that York maintains records of all of these copies, at least those that are
produced within York, but not the external printing services which are not part of York or
regulated. The copying appears to extend to all facets of teaching related activities at York.
Thus, as York argues there are potentially thousands upon thousands of copies in issue because
of the number of students, faculty and staff; course enrolment; the number and size of the library
collections and subscriptions; the number of photocopiers; the extent to which learning
management systems are used; and, the use of photocopiers. The types of copying include
course packs and content posted to learning system sites. A course pack is a collection of
reading materials that may include such things as a course outline, syllabus, articles or excerpts
of articles or texts and the like. As noted this does not include non-York copying centres where
copying of works for use by students and faculty at York may be made. In all, production in this
case and discoveries are a Herculean task which supports some form of bifurcation.
Access Copyright argues that bifurcation as proposed by York will create substantive
prejudice to Access Copyright to defend against the propriety and application of York’s Fair
Dealing Guidelines. While the parties differ as to how Fair Dealing Guidelines are to be applied,
it appears that a factual matrix must be established before their application can be ascertained.
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The guiding principle for bifurcation is summarized in Apotex Inc. v. Merck & Co. Inc.,
2004 FC 1133 at para. 3 as follows:
3. . . . The order may be made where the Court is satisfied on
a balance of probabilities that, in light of the evidence and all the
circumstances of the case (including the nature of the claims, the
conduct of the litigation, the issues and the remedies sought),
severance is more likely than not to result in the just, expeditious
and least expensive determination of the proceeding on its merits
(Illva Saronno S.p.A. v. Privilegiata Fabbrica Maraschino
"Excelsior", 1998 CanLII 9100 (FC), [1999] 1 F.C. 146 at para. 14
(F.C.T.D.); (1998), 84 C.P.R. (3d) 1; Illva Saronno S.p.A. v.
Privilegiata Fabbrica Maraschino 2000 CanLII 14897 (FC),
(2000), 183 F.T.R. 25 at para. 8 (F.C.T.D.), [2000] F.C.J. No. 170
(F.C.T.D.) (QL)). Additionally, a case management judge may deal
with all matters that arise prior to a trial or hearing and may give
any directions that are necessary for the just, most expeditious and
least expensive determination of the proceeding on the merits
(Rule 385(1)).
In all, I am of the view that York has met its onus of establishing that bifurcation can
properly be granted. As well, Access Copyright has demonstrated that there may very well be
substantive prejudice in granting the bifurcation order as sought by York. Thus, a form of
bifurcation order must be made which will as much as possible achieve the objectives of
bifurcation without prejudicing the rights of Access Copyright.
One additional significant factor which must also be considered is that this case is
specially managed. As such, the Court more actively controls the process and is available on
reasonably short notice as needed by the parties to solve issues as they may arise in the course of
the litigation. To that end, Access Copyright will have access to the Court as this case goes
forward to seek such variance as may be appropriate in the event the form of bifurcation below
curtails a substantive right of Access Copyright in putting its case forward on the bifurcated
issues.
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In the result, a bifurcation order will issue in a form similar to that proposed by York but
with a requirement that York produce the numbers and types of copying it tracks. As well, York
shall provide a reasonable limited number of samples of the types of copying. As this matter
moves forward to trial, it is expressly noted that this order is subject to variation as needed to
ensure neither party is prejudiced in asserting the claims or defences it reasonably requires to
deal with the bifurcated issues.
THIS COURT ORDERS that:
1. In this Order;
(a) “Access Copyright” means the Plaintiff/Defendant by Counterclaim, and
The Canadian Copyright Licensing Agency.
(b) “Five Individuals” means the Five Individuals identified in paragraph 17
of the Statement of Claim.
(c) “Phase I Issues” means all of the issues in this action, other than the
Phase II Issues. For greater certainty, the Phase I Issues include:
(i). all issues relating to the Schedule B Works, including:
(A). the alleged activities set out in paragraphs 16 and 17 of the
Statement of Claim allegedly engaged in by the Five
Individuals; and
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(B). whether Access Copyright is entitled to any relief in
connection with such activities; and
(ii). all issues arising from paragraph 25 of York’s Statement of
Defence and Counterclaim.
(d) “Phase I” means documentary and oral discovery and all other steps up to
and including a trial or other determination of all of the Phase I Issues,
including any appeals.
(e) “Phase II Issues” means all of the issues in this action relating to works
other than the Schedule B Works. For greater certainty, the Phase II
Issues include all issues arising from paragraph 20 of the Statement of
Claim, including whether Access Copyright is entitled to any relief in
connection with the alleged reproduction and authorization of
reproduction referred to in that paragraph, all of which is subject to the
exceptions noted in paragraph 2 below.
(f) “Schedule B Works” means the 87 works listed in schedule “B” to the
Statement of Claim.
(g) “York” means the Defendant/Plaintiff by Counterclaim, York University.
2. Access Copyright shall have limited production and discovery of York as it
relates to the volume of copying as tracked by York and the types of such copying
arising from the allegation in paragraph 20 of the Statement of Claim, in order to
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assert its defences regarding the Fair Dealing Guidelines. A limited number of
samples of such copying types shall be produced and discovered upon. Counsel
for the parties shall confer and determine the extent of such samples and the Court
may be contacted to assist in finalizing the extent of such production, samples and
discovery.
3. The Phase II Issues in this action shall be determined separately from, and only
after Phase I, if necessary, depending upon the outcome of Phase I. For greater
certainty, during Phase I there shall be no documentary or other discovery on
matters solely relating to the Phase II Issues except as noted in paragraph 2
hereof.
4. If it is necessary, depending upon the outcome of Phase I, to proceed to a
determination of some or all of the Phase II Issues, the procedure to be followed
for the determination of the Phase II Issues shall be as directed by the Phase I trial
judge, and either party may bring a motion for such directions after judgment
following the trial in Phase I. Such a motion for directions may be brought
regardless of whether the judgment is being appealed.
5. Costs in the cause.



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6. The parties may at any time arrange a case management conference with the
Court to request Directions concerning the implementation of this Order or such
variation of this Order as the circumstances may require.
“Kevin R. Aalto”
Case Management Judge