Court File No.

T-578-13

FEDERAL COURT

B ETWEEN:

THE CANADIAN COPYRIGHT LICENSING AGENCY
("ACCESS COPYRIGHT")

Plaintiff/
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YORK UNIVERSITY ~li?':t5estl LrEri;L'S

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~~Defendant/
Plaintiff by Counterclaim

WRITTEN REPRESENTATIONS

A. Overview

1. The plaintiff, Access Copyright ("Access"), was awarded its costs of the action in the

Judgment dated July 12, 2017.

2. In accordance with Rule 400(4), Access requests that the trial judge order the defendant,

York University ("York"), to pay the lump sum of $549,703.00 to Access within 30 days

of that order to satisfy the costs award. That sum is comprised of $321,000.00 to account

for the expenses incurred by Access to employ its litigation lawyers for this litigation; and

$228,703.00(inclusive of HST)to account for other out-of-pocket expenses necessarily or

reasonably incurred by Access in relation to the action.

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I 3. Alternatively, if the trial judge is disinclined to make a lump sum award of costs, Access

requests, pursuant to Rule 400(5), that the trial judge make directions to the Assessment

Officer that are set out in Schedule "A" to the Notice of Motion.

B. LumP sum awards are well established in the 'uris
J Prudence

4. The practice of awarding lump sum costs as a percentage of actual costs reasonably

incurred is well established in the jurisprudence. They save the parties time and money and

further the objective of securing the just, most expeditious and least expensive

determination of the proceedingsl.

I 5. Increased costs in the form of lump sum awards tend to range between 25% and 50% of

actual fees.2

6. Awards of lump sum costs are not restricted to complex cases. Lump sum awards of costs

are appropriate in all cases, whether simple or complex, when the successful party can

I demonstrate why the circumstances of the case warrant an increased award3.

7. Provided they are supported by the evidence, all reasonably necessary expenditures

incurred by the successful party are compensable disbursements.4

paras. 11, 16 —
t Nova Chemicals Corporation v The Dow Chemical Company, 2017 FCA 25 @
Tab B
2 Ibid, @ para 17.
3 1bid, @ paras. 12-13
4 II71C~, @ para. 20

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C. Rule 400(3) factors to be considered in the exercise of the trial judge's discretion

8. A consideration ofthe factors guiding the trial judge's discretion in awarding costs supports

a lump sum award approximating 50% of the expenses incurred by Access to employ its

salaried litigation counsel to represent Access in the litigation; and 100% of the out-of-

pocket disbursements disclosed in the draft Bills of CostsS and supported by the court's

recorded entries and the evidence supplied by Access.6

(a) Rule 400(3)(a) —result of proceeding

9. Access was entirely successful in respect to all issues before the court in Phase I of these

proceedings.

(b) Rule 400(3)(c) —complexity and importance

10. As acknowledged by the trialjudge,the case was "difficult and complex" involving "vast"

amounts of evidence.

2013
1 1. The issues raised in the action were of critical importance to Access. In an October
about the
article published in the AUCC's publication University Affairs8,the author wrote

case as follows:

"The stakes are equally high for Access Copyright. If the fair dealing guidelines are
"It
allowed to stand, this could change the way the copyright collective operates.

Record ("MR"), Tabs
5 Draft Bills of Costs, Affidavit of R. Levy, Exhibits "C" and "D", Motion
2C and 2D
6 Affidavit of R. Levy, MR,Tab 2
~ Reasons for Judgment, para. 4
$ Trial Exhibit P-66 —Tab 3A

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really impacts the relevance of Access Copyright and its whole
existence', said Mr.
[Gregory] Juliano [general counsel for the University of Manit
oba]."

12. The importance of the issues raised in the action trans
cended the interests of the parties to
the litigation. In the same University Affairs article referr
ed to above, the author wrote:

"
' I think it's very significant', said Gregory Julian
o, general counsel for the
University of Manitoba. `What's really at the heart of the chall
enge is the meaning
of fair dealing,' which he called `a big issue' not only for
York but all univer sities
that have adopted similar fair dealing guidelines. `If York
was wrong, everybody's
wrong."'

13. Indeed, the issues in the case were so important to other
post-secondary institutions and
their membership associations, that the non-party AUCC(now
Universities Canada)Board
of Directors contributed at least $100,000 to fund York's legal
expenditures and wrote to
all university presidents encouraging them to voluntarily make financ
ial contributions to
York's legal fees in recognition of the impact of the case. Accor
ding to the then vice-
president of the AUCC, "significant" contributions were made
from institutions from
across Canada.9

~~

' 9 Trial Exhibit P-66, Tab 3A

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(c) Rule 400(g) —the amount of work

vast. The court's recorded
14. As observed by the trial judge, the evidence in the case was
expended by the parties to get
entries for the action confirm the significant amount of work
nt confe rences were conducted
the case ready for trial. No fewer than 23 case-manageme

by Case Management Judge Aalto.

significant amount of work that was
15. In April 2016, York's counsel summarized the
inous productions from both sides.
expended in the pre-trial process.10 There were volum
very. Access was represented at
There were 12 days dedicated to examinations. for disco
s was represented by three counsel
almost all pre-trial proceedings by two counsel. Acces
el) for each pre-trial proceeding and
at trial. York employed two (and often three couns

retained the services ofthree to five counsel at trial.

inous. The court received eight expert
16. The trial lasted 19 days. The trial exhibits were volum
witnesses, including five expert witnesses.
reports or reply reports. The court heard from 27

es underscores the amount of work that was
17. The number of counsel employed by the parti
issues that they had to address.
required to be done and the complexity ofthe

ssed by others
(d) Rule 400(h) —interest in the litigation expre

ary interests of the thousands of creators and
18. The issues in the case impacted the monet
and whose copyright-protected works are copied in
publishers whom Access represents
in Canada.
post-secondary educational institutions

loApril 11, 20161etter, E~ibit"H" to Affidavit of R. Levy, MR,Tab 2H

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19. As discussed above, many post-secondary educational institutions were also interested in

having the issues litigated as evidenced by their financial contributions to York's legal

costs.

20. "
The issues were also of interest to elementary and secondary educat'tonal institutions(K-

12 institutions") as evidenced by the failed attempt by the Council of Ministries of

Education, Canada("CMEC"),to intervene in the proceedings on behalf ofthe interests of

K-12 institutions.11

(e) Rule 400(1) —conduct of a party

21. In paragraph 16(a) of its Statement of Defence and Counterclaim, York alleged that a

significant portion of the copying of copyright-protected works at York was permitted

under licences and other contractual arrangements with publishers.

22. Despite making that allegation in September 2013, York withheld production of the bulk

of the documentation that allegedly supported that position until April 2016 —less than 6

weeks before trial. In the words of Case Management Judge Aalto, York's failure to timely

produce these documents caused "extraordinary prejudice" to Access.

23. To address these new productions, one of Access' counsel, Ms. Jessica Zagar, was required

to halt all other trial preparation and devote almost the entirety of the six weeks before

trial:l) reviewing these productions; and 2) preparing for and conducting 14 hours (over

1 1 See Court docket no. 44 —Order dated April 1, 2014 dismissing CMEC's motion to intervene in
the action.

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three days in the 10-day period immediately preceding the first day oftrial) ofexaminations

for discovery that were dedicated exclusively to these late productions.

24. In addition, to mitigate the prejudice to Access from York's late production of documents,

Access retained the services ofexternal counse112 to assist in the review ofthese documents

(which numbered 1000+ and filled no fewer than 18 large binders).13

25. Ultimately, as found by the trial judge in his reasons14, "York's reliance on permissions

was misplaced and of no assistance."

26. Indeed, York conceded -but only during oral argument on the 18th day of trial- that its

evidence on licensing information was inaccurate and its ability to marry up copies with
upon.ls
the relevant licence or permission was impossible to rely

27. York's conduct in withholding 1000+ documents until 6 weeks before trial, that required

Access to unnecessarily devote critical time and expense to an issue that York ultimately

conceded — on day 18 of a 19 day trial -could not be proven, constituted conduct that

unnecessarily lengthened the duration of the proceedings.

12 Invoice from Bennett Jones LLP, E~ibit"G" to Affidavit of R. LevY> MR> Tab 2G
13 Access letter to court dated April 22,2016, Exhibit"H" to Affidavit of R. Levy, MR,Tab 2H
'4 Reasons For Judgment dated July 12, 2017, para. 91
Is Reasons For Judgment dated July 12, 2017, pars. 287

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(~ Rule 400(n.l) —was the expert evidence justified?

nature of
28. Access retained two expert witnesses, Benoit Gauthier and Michael Dobner. The
d by
the litigation and the complexity of the issues in dispute justified the expense incurre

Access in retaining these witnesses.

ing.
29. The trial judge found16,"the expert evidence ofthe plaintiff more credible and compell
flaws than the
It was more rigorous, coherent and consistent and it suffered from fewer

evidence of the defendant."

~ his evidence
30. In respect to the plaintiff's expert witness, Mr. Dobner,the trial judge found~
assistance to the
to be "thorough, thoughtful and compelling" and was of "considerable
expert witnesses,
court". Whenever his evidence conflicted with the evidence of York's

the trial judge preferred the evidence of Mr. Dobner.18

r, whenever his
31. Similarly, in respect to the plaintiffls expert witness, Benoit Gauthie
trial judge preferred the
evidence conflicted with that of York's expert witnesses, the

evidence of Gauthier.19

expert witness fees only
32. It bears noting that the amounts claimed by Access on account of

Access for the fees and expenses billed to it by
partially reimburse

l Dobner .20
PricewaterhouseCoopers LLP ("pwc")for the services of Michae

86
16 Reasons For Judgment dated July 12, 2017, para.
12, 2017, para.10 6
~~ Reasons For Judgment dated July
para. 25
'g Reasons For Judgment dated July 12, 2017,
19 Reasons For Judgment dated July 12, 2017, paras. 128 and 345
pwc but, appropriately, only the time spent by the
20 Access was billed over $175,000 in fees by
d disbursement($66,040)
testifying expert, M.Dobner, is being claime as a recoverable

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es billed to
33. All amounts claimed by Access to partially reimburse it for the fees and expens
award of costs or
it by its two expert witnesses should be awarded as part of a lump sum

should factor in the directions to be given to the Assessment Officer.

amoun t
D. How Access calculated the fee component of the claimed lump sum

Z> > l were salaried
34. Ms. Levy explains in her affidavit that Access litigation counse
of $ 642,000 as a
employees. Ms. Levy further explains how she arrived at the sum
in employing salaried
reasonable approximation of the legal costs Access incurred

litigation counsel to represent it in the litigation:

ion counsel for each ofthe
1. the annual costs associated with the employment of its litigat
tabulatedzz;
years 2013 to 2016 were

the litigat ion against York were
2. the costs that would have been incurred irrespective of
Exhibit"A"to the affidavit
disregarded, i.e., the non-highlighted entries on confidential

of Ms. Levy were not further considered;

(or a denominator less than 12
3. the highlighted adjusted yearly costs were divided by 12
specific year) to arrive at a
if the litigator was employed less than 12 months in any

monthly cost per litigator;

or, Mr. Renaud) estimated the
4. each litigator (or in the case of Ms. Tsai, the lead litigat
ion in each of the 39 months
percentage of the time (s)he dedicated to the York litigat

Exhibits "A" and "B", MR,Tabs 2A and 2B
t 21 Affidavit of R. Levy, paragraphs 10-20,
22 Affidavit of R. Levy, Exhibit"A", MR,Tab 2A(CONFIDENTIAL ENVELOPE)

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(between the filing of the Statement of Claim in April 2013 and the conclusion of trial

in June 2016)that the action was pending23;

5. the relevant monthly employment costs for each lawyer were then multiplied by the

variable monthly percentages estimated by each lawyer to arrive at a sum per lawyer

per month;

6. the total sums for each of the four lawyers24 were calculated; and

7. the four total sums per lawyer were added to arrive at the total sum of $642,000

(rounded from $641,504 to the next thousand).

35. Moreover, as the evidence filed by Ms. Levy reveals, as Access conducted the litigation

using "in house" litigation lawyers, it did not have access to law clerks and support staffto

generate all the documents that were ultimately filed with the court, including the

voluminous binders of discovery "read-ins", other trial exhibits (there were over 100

exhibits at the end of the trial), and binders of compendia for use in oral argument.

36. Access paid approximately $47,000 to Bennett Jones LLP for the services of a law clerk

who prepared all bound volumes of documents that were filed with the court during the

tria1.25 Had Access retained external counsel to represent it, those law clerk costs would
rates
have been partially recoverable because they would have been reflected in the hourly

charged to Access by external counsel.

z3 Affidavit of R. Levy, Exhibit "B", MR,Tab 2B
z4 Renaud - $286,531; Finlay - $173,422; Zagar — $169,372; and Tsai - $12,179.
25 Invoices # 1127639; 1130339; 113365; and 1138088, Affidavit of R. Levy, Exhibit "F", MR,
Tab 2F

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Access
37. Had Access not employed salaried litigation counsel to represent it in the action,
to the pre-
would have had to retain external counsel. Given the amount of work dedicated
a r of
trial and trial proceedings summarized above, it is almost a certainty that retaine
have resulted
external counsel with the necessary experience to prosecute the action would
by Access to the
in legal fees to Access far exceeding the $642,000 in legal fees dedicated

action.

l counsel were
38. Access reasonablY exPects that the legal fees billed to York b Y its externa
eration the
more than the $642,000 sum that Access expended, before taking into consid
rty post-secondary
"significant" contributions to York's legal costs provided by non-pa
26
institutions and organizations.

ofthe issues being
39. Given the amount of work involved and the complexity and importance
fees was eminently
litigated, Access' expenditure of $642,000 on account of its legal

reasonable.

ted by comparing it to the
40. A rough "reasonableness check" of this sum may be conduc
y concluded intellectual
solicitor-client fees expended by external counsel in other recentl
following chart27 provide a
property infringement actions. The data included within the
Access in this action on
rough confirmation ofthe reasonableness ofthe sum expended by

account of legal fees:

26 Trial Exhibit P-66, Tab 3A; See paragraph 13 above
ed from the reported decisions and a review of the
27 The information in the chart was gather
relevant recorded entries maintained by the court in each action

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Court Duration Solicitor- Proportion
Citation Title of Proceeding Number of
Witnesses of Trial Client of Fees
File Fees Awarded
Fact Expert as a Lump
Sum

T-]784-06 2010 FC 1099 Philip Morris Products S.A. 20 5 18 days $2 million 33%
Lam' (merits) v
2011 FC 1113 Marlboro Canada Ltd
(costs) Tab 3C

T-605-07 2015 FC 189 H-D U.S.A., LLC 9 0 9 days $1.27 33%
million
v
Jamal Berrada
Tab 3D

T-467-11 Unreported Yenngo 7 0 3 days $412,000 50%

(January 7, v
2016)
Concierge Connection
Tab 3E

T-2051-10 2016 FC 91 Dow v Nova Chemical 9 6 32 days $9.6 30%
million
Tab 3F

T-339-14 2017 FC 348 Corocord Raumnetz GMBH 6 1 5 days $517,000 25%

v
Dynamo Industries
Tab 3G

T-467-11 Unreported Venngo 7 0 3 days $384,000 50%

(May 18, 2017) v
Concierge Connech'on
(redetermination)
Tab 3H

T-578-13 2017 FC 670 Access Copyright 22 5 19 days $642,000 TBD

(merits) v
York University

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41. Considering the circumstances of this case, the factors set out in Rule 400(3), the

jurisprudence referred to above, and the findings made by the trial judge in the Reasons for

Judgment, Access asks that the court award it 50% (i.e. $321,000) of the $642,000 sum,

calculated in the manner described above, as the fee component of the costs award to

Access.

42. As revealed in Ms. Levy's affidavit28, if Access' recovery was limited to the amounts

provided under Tariff B of the Federal Courts' costs tariff, that recovery would range from

less than 20% ($125,173 under Column III of Tariff B)to 34% ($219,421 under Column

V of Tariff B)of the $642,000 sum.

43. Even if the trial judge declined to make a lump sum award but gave all the directions29 to

the Assessment Officer(as requested by Access, in the alternative, to its request for a lump

~ sum), and the Assessment Officer made no deductions to the draft Bill of Costs, 30Access'

recovery of the fee component of its costs award would be approximately 44%($286,707

at the top end of Column IV)ofthe $642,000 sum.

28 Affidavit of R. Levy, Exhibit "C", MR,Tab 2C
z9 Affidavit of R. Levy, Exhibit "E", MR,Tab 2E
3o Affidavit of R. Levy, Exhibit "D", MR,Tab 2D

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E. The disbursements claimed by Access

44. Access asks the court to fix the disbursement component of the lump sum costs award at

$228,703.18 (inclusive of$25,122.16 HST). The claimed amount is fully supported by the

Levy affidavit.3 ~

~a) ExPert witness fees

45. The trial judge preferred the expert evidence of Mr. Gauthier and Mr. Dobner to that of the
3z
defendant's expert witnesses.

46. The actual amount expended by Access to retain pwc's Michael Dobner was $177,162.50

(before disbursements and HST)33. Appropriately, Access is claiming only the fees (101.6

hours x $650/hr.) docketed by the testifying expert, Mr. Dobner ($66,040).

(b) Printing/photocopying expenses

to the 1000+
47. A significant portion ofthe claimed printing/photocopying expenses34 related
Throughout the
documents that York produced to Access on and after April 5, 2016.
of e-mail only.
proceedings, York delivered its voluminous documents to Access by way
and photocopying
Access was required to incur significant "in house" expenses in printing

these documents.

31 Affidavit of R. Levy, paras. 26-28, Exhibit "F", MR,Tab 2F
3z See paragraphs 28-31 above
33 pwc invoices, Affidavit of R. Levy, Exhibit "F", MR,Tab 2F
3a Bennett Jones invoices, Affidavit of R. Levy, Exhibit "F", MR, Tab 2F

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(c) Services of external counsel for review of late York productions

48. As discussed above, York's late production of 1000+ documents six weeks before trial

caused Access extraordinary prejudice. Ms. Zagar was required to halt all other trial

preparation activities and focus entirely on these documents, and prepare for and conduct

14 hours of oral examinations for discovery related to these late productions in the 10 days

before trial.

49. To mitigate that prejudice and to enable Access to prepare for those examinations, Access

retained Melissa Dimilta, an associate lawyer at Bennett Jones, LLP,on an urgent basis, to

assist Ms. Zagar in the review and comprehension of the documents.

50. As reflected in the Bennett Jones invoice,35 Ms. Dimilta minimized the cost to Access and

ensured the completion of the document review in the abbreviated time available by

delegating some ofthe work to law clerks employed by Bennett Jones.

L 51. In the circumstances, it was not unreasonable for Access to retain Ms. Dimilta. There is no

legitimate reason to deny Access recovery of 100% of the fees it paid to Bennett Jones

because of York's late production of documents.

3s Affidavit of R. Levy, Exhibit "G", MR,Tab 2G

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F. Conclusion

of
' S2. For all the above reasons, Access requests that the trial judge make a lump sum award

costs to Access in the amount of $549,703.00, a sum arrived at by adding:

a. 50% ofthe legal fees that Access incurred in the action = $321,000;
and

b. 100% of the disbursements (and HST)claimed in the draft Bills of
36
COStS = $228,703.

s that the
53. Ifthe trial judge is disinclined to make a lump sum award ofcosts, Access request
ements in
trial judge direct the Assessment Officer to assess Access' fees and disburs

accordance with the directions requested by Access.37

DATED AT TORONTO,ONTARIO THIS 9TH DAY OF AUGUST 2017.

Arthur B. enaud
Barrister &Solicitor
40 Rivercrest Road
~~ Toronto, ON M6S 4H3

(647)984-1049
a.b.renaudn~mail.com

36 Affidavit of R. Levy, Exhibits "C".and "D", MR,Tabs 2C and 2D
37 Affidavit of R. Levy, Exhibit "E", MR,Tab 2E

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