Date: 20190314

Docket: T-326-18

Ottawa, Ontario, March 14, 2019

PRESENT: Case Management Judge Mandy Aylen

BETWEEN:

THE PROVINCE OF ALBERTA and all entities named

in Schedule “A” to the Statement of Claim

Plaintiffs

and

THE CANADIAN COPYRIGHT LICENSING

AUTHORITY (c.o.b. as ACCESS
COPYRIGHT)

Defendant

ORDER

[1] The Plaintiffs have brought this motion in writing seeking the following orders from the

Court:

(i) An order, pursuant to section 50(1)(b) of the Federal Courts Act, providing that

these proceedings be stayed until the appeal relating to The Canadian Copyright

Licensing Agency v York University, 2017 FC 669 [York University] currently

before the Federal Court of Appeal, is determined;

(ii) Costs of this motion;

 Page: 2

(iii)Such other terms as counsel may advise and this Honourable Court may permit.

[2] The Defendant opposes the motion on the basis that the Plaintiffs have failed to satisfy

either condition required to be met for the granting of a stay.

[3] Section 50(1)(b) of the Federal Courts Act provides that this Court may, in its discretion,

stay proceedings in any cause or matter where it is in the interests of justice that the proceedings

be stayed.

[4] The power to grant a stay should be exercised sparingly and only in the clearest of cases

(see Advanced Emissions Technologies Ltd v Dufort Testing Services Ltd, 2006 FC 794 at para 8;

Tractor Supply Co of Texas, LP v TSC Stores L.P, 2010 FC 883 at para 10). The onus of

convincing the Court that there should be a stay is a heavy one and rests with the party seeking

the stay (see Swift v Canada, 2001 FCT 1388 at para 14).

[5] On a motion for a stay, the moving party must satisfy two conditions: (i) that the

continuance of this action would cause it prejudice or injustice (not merely inconvenience or

extra expense); and (ii) that the stay would not cause an injustice to the responding party (see

Tractor Supply Co of Texas LP v TSC Stores LP, 2010 FC 883, aff’d 2011 FCA 46).

[6] Moreover, speculative evidence of prejudice is not enough. The onus on the moving party

is to proffer evidence that the continuation of the Federal Court action would cause it substantial

prejudice (see Omeganutrel Inc v Food Systems Innovations Inc, 2006 FC 1023 at para 23).

[7] The Plaintiffs have sought a stay pursuant only to section 50(1)(b) of the Federal Courts

Act (which addresses the interests of justice) and not section 50(1)(a), which addresses
 Page: 3

circumstances where a stay is sought in the context of related proceedings brought in different

Courts. Notwithstanding, the Plaintiffs have raised in their written representations various

principles enunciated in section 50(1)(a) cases. In those cases, the Court has held that there are

additional non-binding factors that the Court may consider, such as whether the facts alleged, the

legal issues involved and the relief sought is similar in both proceedings, whether there is a

possibility of inconsistent findings in both proceedings and whether there is a risk of imminent

adjudication in the two different forums (White v EBF Manufacturing Ltd, 2001 FCT 713

[White]). I accept that, although raised in the context of section 50(1)(a), these factors may

nonetheless inform the exercise of the Court’s discretion in determining a request for a stay

sought pursuant to section 50(1)(b). However, as has been previously noted by this Court, these

factors are not exhaustive and must be adapted to the unique context of each case, leaving the

Court with broad discretion to determine the weight to accord to each of the factors in light of the

circumstances of the particular case (1395804 Ontario Ltd.(Blacklock’s Reporter) v Canada

(Attorney General), 2016 FC 719 at para 38).

[8] It may be in the interests of justice to stay a proceeding pending the determination of

another proceeding that is further along where determination of the other proceeding would settle

or significantly narrow the issues, clarify the remaining issues, simplify the litigation and

preserve judicial resources (Turmel v Canada, 2016 FCA 9 at para 5; 1395804 Ontario Ltd

(Blacklock’s Reporter) v Canada (Attorney General), supra at paras 39-40, 46).

[9] The Plaintiffs submit that the decision of the Federal Court of Appeal in York University

will have such a bearing on this action that the Court should exercise its discretion to stay this

proceeding until the Federal Court of Appeal has released its decision. The Plaintiffs submit that:
 Page: 4

(i) The Federal Court’s decision in York University is a judicial “outlier” that has

created uncertainty and inconsistency in the law of fair dealing. As this

proceeding addresses fair dealing, it would cause prejudice and an injustice to the

Plaintiffs to force them to proceed with litigation in an uncertain legal climate.

(ii) Given the similarity of facts, issues and relief sought in the York University appeal

and this proceeding, it would be unjust to compel the parties to carry on with

costly litigation with the knowledge that the Federal Court of Appeal’s decision

may dispose of this action.

(iii)Both parties will be prejudiced if they are compelled to engage in exceedingly

lengthy, costly and complex discoveries in this action when the determination of

the York University appeal has the potential to dispose of this entire action.

Staying this action will avoid unnecessary and costly duplication of litigant and

judicial resources.

(iv) The Defendant will not be prejudiced as a result of the stay, as even if the Federal

Court of Appeal finds in favour of the Defendant in the York University appeal,

the parties in this action can simply resume the discovery process. Moreover, the

delay in this action would be negligible, so as to eliminate any prospect of non-

compensable prejudice to the Defendant. While the Defendant asserts that it faces

financial hardship and is at risk of having to scale or wind down its business as a

result of not having been paid by the Plaintiffs for six years, this assertion is not

supported by the evidence filed by the Defendant and moreover, is contradicted

by the fact that, according to the Plaintiffs, the Defendant has effectively received
 Page: 5

an involuntary loan from the Plaintiffs in the form of excess royalty payments

valued at over $25,000,000.00.

[10] Having considered the evidence and submissions filed by the parties, I am not satisfied

that the Plaintiffs have established that this is one of the “clearest of cases” where it is in the

interests of justice that a stay of this proceeding should be granted pending the determination of

the York University appeal.

[11] Specifically, I find that the Plaintiffs have not established that the continuation of this

action would cause them prejudice or injustice. The prejudice and injustice cited in the Plaintiffs’

motion materials is limited to the high cost and inconvenience of having to litigate this

proceeding in an uncertain legal climate.

[12] The cost and effort involved in prosecuting this action was known to the Plaintiffs when

they chose to commence the proceeding. Even if properly characterized as high, I am not

satisfied that it amounts to prejudice or injustice of the nature contemplated to support a stay,

particularly in light of this Court’s clear statements that inconvenience and extra expense do not

meet that threshold. While the discovery process will be complex and involve a significant

amount of party resources, the burden of the discovery process is being managed by streamlining

discovery to only a representative sample of documentary productions that will either be agreed

to by the parties or ordered by the Case Management Judge. Examinations for discovery can also

be streamlined so as to proceed on a representative basis, thereby decreasing the cost and

inconvenience to the parties.

 Page: 6

[13] I am also not satisfied that having to move forward with this case in an uncertain legal

climate, as suggested by the Plaintiffs, amounts to the necessary prejudice or injustice to warrant

the Court’s exercise of its discretion to grant the requested stay. The law is constantly evolving

through statutory amendments and the issuance of precedential decisions that clarify the

application of statutory provisions and modify the common law. It would be unfair to litigants to

deprive them of their right to bring forward claims simply due to this constantly changing legal

climate. However, as noted above, this Court will, in appropriate circumstances, exercise its

discretion to stay proceedings where the determination of another proceeding would settle or

significantly narrow the issues before this Court, simplify the litigation before this Court and

preserve judicial resources.

[14] The Plaintiffs assert that this action and the York University appeal raise similar issues of

fact and law, claim similar relief, involve fair dealing guidelines that are virtually identical, will

both consider the proper scope of fair dealing and will both consider whether tariffs certified by

the Copyright Board are mandatory or voluntary. As a result, the Plaintiffs assert that the York

University appeal decision “could be dispositive” of this action.

[15] However, having reviewed the evidence given by the Plaintiffs’ affiant in both his

affidavit and on cross-examination, having reviewed the pleadings in both proceedings and

having reviewed the written submissions of the parties, I am not satisfied that the Plaintiffs have

demonstrated precisely how the decision in the York University appeal will settle or significantly

narrow the issues before this Court. Rather, the Plaintiffs have simply made high level assertions

to that effect, some of which were contradicted on the cross-examination of the Applicant’s

affiant.
 Page: 7

[16] Importantly, the Plaintiffs have provided no explanation as to how the decision in the

York University appeal as to whether an interim tariff is mandatory would be relevant to – yet

alone determinative of - whether a final tariff is mandatory, which is what is at issue in this

proceeding. The Plaintiffs simply assert in reply that it is irrelevant if the tariff is interim or

certified/final, without any explanation as to why they assert that is the case. The Federal Court

of Appeal has expressly confirmed that the York University appeal is limited to the interim tariff

issue and that it would not be expanded to consider final tariffs (see York University v The

Canadian Copyright Agency, 2018 FCA 81 at paras 9 and 13). In the circumstances, I find that

the Plaintiffs’ failure to address this issue is problematic, particularly in the absence of any

confirmation by the Plaintiffs that any finding in the York University appeal regarding the nature

of an interim tariff (mandatory or voluntary) would be determinative of the nature of a final

tariff.

[17] Further, on the issue of fair dealing, the Supreme Court of Canada has clearly stated that

“whether something is fair is a question of fact and depends on the facts of each case” (see

SOCAN v Bell Canada, [2012] 2 SCR 326 at para 32). The factual underpinnings of this case and

the York University appeal are different, as are the parties. Most importantly, the two

proceedings involve different guidelines applied in different educational environments with

potentially different compliance levels by the relevant educators and educational institutions. In

the York University appeal, the case involves a guideline adopted by York University in the post-

secondary education environment. In this action, the proceeding involves different guidelines

adopted by the Plaintiffs in the kindergarten to grade twelve educational environments.

 Page: 8

[18] While the Plaintiffs assert that the two guidelines are virtually identical (with the one

exception of the additional phrase “provided that in each case, no more of the work is copied

than is required in order to achieve the allowable purpose”, which appears only in the York

University guideline) and are premised on the same interpretation of fair dealing, such that any

findings related to fair dealing in the York University appeal will settle or significantly narrow

the fair dealing issues in this action, I find that this assertion was undermined on cross-

examination where the Plaintiffs’ affiant: (i) admitted that different language in the Plaintiffs’

guidelines could be interpreted differently by a teacher in the kindergarten to grade 12

educational environment; (ii) confirmed that professors at York University and teachers in the

kindergarten to grade 12 system are working in a different environment with different policies

applicable in different provinces; (iii) admitted that how any given guideline is supervised,

trained or enforced will vary from system to system; and (iv) admitted that a finding on

compliance in York University would not determine the issue of compliance in this action.

[19] I agree with the Defendant that even if, as the Plaintiffs suggest, the law on fair dealing is

clarified in the York University appeal decision, that law will still need to be applied to the facts

of this particular case, which are incontrovertibly different than those in York University. I am

not satisfied that the Plaintiffs have established how the decision in the York University appeal

will settle or significantly narrow the fair dealing issues in this proceeding, particularly in light of

the various defences pleaded by the Plaintiffs to the Defendant’s counterclaim, which are largely

fact-driven.

[20] Taking into account the additional factors raised in White, I find that there is no risk of

imminent adjudication in this action and in the York University appeal. The York University
 Page: 9

appeal has been heard and the matter is under reserve. In this action, the parties are only at the

close of pleadings. No adjudication will be made on the merits prior to the release of the Federal

Court of Appeal’s decision in York University. As for the risk of inconsistent findings, as noted

above, the parties are different and the guidelines at issue are different in both proceedings and

accordingly, there is a minimal risk or no risk of inconsistent factual findings.

[21] While I acknowledge that any determinations made by the Federal Court of Appeal as to

the law of fair dealing may clarify some of the legal issues raised in this proceeding, I am not

satisfied that that, in and of itself, is sufficient to deprive the Defendant of the ability to move

forward with its counterclaim in a timely manner. The parties will be able to consider the Federal

Court of Appeal’s determination and its potential impact on the issues raised in this proceeding

long before this matter will be ready for trial and can adjust their legal strategies accordingly.

[22] Moreover, as noted above, the preservation of judicial and party resources and any

impact of the Federal Court of Appeal’s decision on this proceeding can be managed through

case management. In any event, I find that the consumption of potential judicial resources

pending the Federal Court of Appeal’s decision is not a driving consideration, given that there is

only one pending motion in this action and no trial date has yet been set.

[23] Accordingly, I find that the Plaintiffs have failed to satisfy the first condition for the

granting of a stay, which is sufficient to dismiss the motion. I will therefore not go on to consider

whether the Plaintiffs have met the second condition for the granting of a stay.

[24] On the issue of costs, I am satisfied that the Defendant is entitled to its costs of the

motion. However, I am not satisfied that the circumstances of the motion warrant an order that
 Page: 10

the costs be made payable forthwith. The parties shall attempt to reach an agreement on an

appropriate quantum, failing which brief written cost submissions not exceeding three pages in

length shall be served and filed by the Defendant by March 28, 2019 and by the Plaintiffs by

April 4, 2019.

THIS COURT ORDERS that:

1. The Plaintiffs’ motion is dismissed.

2. The Defendant is entitled to its costs of this motion in any event of the cause. The parties

shall attempt to reach an agreement on an appropriate quantum, failing which brief

written cost submissions not exceeding three pages in length shall be served and filed by

the Defendant by March 28, 2019 and by the Plaintiffs by April 4, 2019.

“Mandy Aylen”
Case Management Judge