The Canadian Copyright Board:

To Be or Not To Be That Is A
Question
ALAI CONFERENCE
OTTAWA, CANADA
May 25, 2016

HOWARD P. KNOPF
Counsel
MACERA & JARZYNA, LLP
OTTAWA, CANADA
(some of this material has appeared before on my blog and/or in
presentations at Fordham and University of Toronto)
(views are personal and not necessarily those of my firm or clients and
are not legal advice)

What I will cover

What needs to change in Canada?
Some background on regulation of
collectives in Canada and elsewhere
How I would reimagine the
Copyright Board

The Need For Change

Tariffs often take 4 years or more to get to a
hearing and 2 years or more thereafter for a
decision and thats before judicial review
Tariffs are significantly retroactive
Cost of proceedings is prohibitive even
now for collectives
The problem of default proceedings
The lack of a policy mandate for the
Copyright Board

Even the Collectives are

Complaining

Recent tariffs that wont pay for themselves:

Access Copyright Provincial Government Tariff
(worth about $370,000 over ten years)
Re:Sound Pandora Tariff ($500,000 per annum
revenue, but if and only if Pandora launches in
Canada which it has not done)
Canadians still cant get there from here re
Pandora:
We are deeply, deeply sorry to say that due to licensing
constraints, we can no longer allow access to Pandora for
listeners located outside of the U.S., Australia and New
Zealand. www.Pandora.com

Reaction? Judicial review and why not?

But certain collectives are going straight to the
Court of Public Opinion or worse

Collective Response

Access Copyright spending its dwindling

funds on an unconvincing PwC report and
litigation
Very inappropriate lobbying/astroturf
campaign by MusicCanada.com:
Send an email to the Chair of the Copyrigh
t Board of Canada re: Tariff 8

The Impact of CBC v.

SODRAC
De jure v. de facto mandatory
For tariffs that are not de facto mandatory, the
Board will have to set attractive rates, terms
and conditions if there is to be any uptake
There may now be more default proceedings
due to cost factors and realization that many
tariffs are neither de jure nor de facto
mandatory
The SCC has sent a strong signal about
retroactivity

Retroactivity Issue is on SCCs Radar

Screen
Footnote #2 of CBC v. SODRAC 2015 SCC 57:
[2] During the hearing before this Court, counsel for
the interveners the Centre for Intellectual Property
Policy and Ariel Katz briefly raised concerns regarding
the Boards power to issue retroactively binding
decisions in general. That issue was not squarely
before this Court in this case, and I do not
purport to decide broader questions concerning
the legitimacy of or limits on the Boards power
to issue retroactive decisions here.
(emphasis added)

The Pendency Problem

In a published speech from 2006, at a time when
parties were concerned about the 18 month
pendency delay, the now retired Chairman of the
Copyright Board (William Vancise) stated shortly
after his appointment:
I am not at all happy with the time it takes to render a
final decision. I have tried to address the issue and I
can assure you it will be resolved. If the Supreme
Court of Canada can render a decision within six
months of a hearing, there is no reason why this Board
cannot do the same. My goal is to see that this occurs.

Recent Examples of Pendency

After Board Hearing
Commercial Radio = ~ 30 months
K-12 I = ~ 24 months
K-12 II = ~ 20 months
Fitness = ~ 26 months
Re:Sound Tariff 8 (Pandora) = ~ 18 months
SODRAC Tariff 5 = ~ 30 months and has now been
remitted by SCC
Access Copyright Provincial Tariff = ~ 30 months
CMRRA/SODRAC Inc. (CSI) Tariff (2011-2013);
SOCAN Tariff 22.A (2011-2013;
SODRAC Tariff 6 (2010-2013) still pending since
November, 2013

SCC 2015 average in months

Between filing of application for leave &
decision on application for leave: 4.1
Between date leave granted (or date notice
of appeal as of right filed) and hearing: 7.3
Between hearing and judgment: 5.8
Total: 17.2

Timing in the Federal Court

May 1, 2009 NOTICE TO THE PARTIES AND THE
PROFESSION STREAMLINING COMPLEX LITIGATION
The management and expeditious disposition of
complex actions can be facilitated not only by cooperation between litigants and their counsel, but by
the effective use of the Federal Courts Rules,
particularly those concerning case management. The
purpose of streamlining complex actions is to
facilitate, where possible, the scheduling of trials
within two years of the commencement of the
proceeding.

Other Nearby Courts and

Tribunals
Federal Court:
Two years or less to trial, even in complex cases
Norm of 3-4 months or less to render decisions

Competition Tribunal
Toronto Real Estate Board:
4 years 11 months start to finish

Visa & MasterCard

~ 2 years 8 months start to finish

PMNOC 24 months start to finish, including

decision

NOC Regime
Federal Court: NOTICE TO THE PARTIES AND THE PROFESSION
CASE MANAGEMENT GUIDELINES FOR NOC APPLICATIONS May
2016:
The Court must render a decision within 24 months from the
date that the Minister received proof of the issuance of any
Notice of Application (section 7(1)(e) of the Regulations). That
time period may be extended, if the parties consent or on
motion if the Court finds that the second person has failed, at
any time during the proceeding, to reasonably cooperate in
expediting the application. That time period may also be
shortened, if the parties consent or on motion if the Court finds
that the first person has failed, at any time during the
proceeding, to reasonably cooperate in expediting the
application.
(emphasis added)

Collective Copyright Regulation

in Main Common Law Countries
USA
The Rate Court mechanism
The Copyright Royalty Board

UK
Copyright Tribunal
Review by High Court

Australia
Copyright Tribunal
Review by Federal Court of Australia

New Zealand
Copyright Tribunal
Tribunal may state a case or parties may appeal to High Court

Canada
Copyright Board
Review by Federal Court of Appeal

Canada Parker Commission

1935
(3)That the Copyright Act be
amended so as to provide for the
establishment of an Appeal
Tribunal, to determine disputes
arising out of performance in
public and to approve of the
tariffs of the Canadian Performing
Right Society Limited from time
to time before they become
effective. (emphasis added)

The Commission recommends that legislation be introduced having the objects:(1) That there be included in the Canadian Copyright Act a clause similar 40 of the Patent Act (R.S.C., 1927, c. 150), to
prevent vexatious and unwarranted legal proceedings;
(2) That Section 17 of the Copyright Act be further amended to make the societies mentioned in Subsection (i), (vii), (viii)
fully exempt from infringement and from the payment of performing right fees, notwithstanding the fact pay a fee to the
individual performers; providing they do not lend to promoters;
(3) That the Copyright Act be amended so as to provide for the establishment of an Appeal Tribunal, to determine
disputes arising out of performance in public and to approve of the tariffs of the Canadian Performing Right Society Limited
from time to time before they become effective.
The position now is that the Society, having a monopoly of the performing rights in copyright music, has also the right
to impose whatever fees it chooses. Where other monopolies have existed, it has been found necessary to have some
independent body analyse and pass on the tariffs of fees that may be charged, e.g. freight rates, express rates,
telephone rates, etc. If the Society can continue to dictate its own terms, and pursue a policy of greatly increasing those
terms, then finally the community will be prevented from listening to its music.
The Commission is altogether in accord with the recommendation of the Honourable Mr. Justice Owen in his report resulting
from the Inquiry in Australia, with the recommendation and the report of the Select Committee of the House of Commons
in 1930, and with the recommendation contained in the report of the Honourable Mr. Justice Ewing in 1932, that there
should be an amendment to the Copyright Act to the effect that either the various tariffs as filed by the Canadian
Performing Right Society, Limited, should first receive the approval of some independent board, or to the effect that
if any users felt that they were being charged unfair and exorbitant fees they would have a right of appeal to an
independent body. Some doubt exists as to whether this could be done without offending against the terms of the Rome
Convention, but this Commission is of the opinion that as long as the representation of the British and foreign societies
remains in the Canadian Performing Right Society, Limited, which must be considered a Canadian national, that Parliament
can regulate the Society at least to this extent.
(emphasis added)

USA CRB and the Courts

Copyright Royalty Board (CRB) has very specific
jurisdiction and mandated procedures
Consists of three (3) full time Copyright Royalty
Judges (limited terms) 17 USC 801& 802
Mandated expertise in economics and copyright law
Must be lawyers
Staff of three (3) to support (17 USC 802)
Hortatory specification of pendency limit of 11
months 17 USC 803(c)(1) & 15 days from expiration
of a current statutory rate & terms
Appeal to United States Court of Appeals for the
District of Columbia Circuit 17 USC 803(d)(1)

How Is the CRB Working?

Predecessors were Copyright Royalty
Tribunal and CARP (The Copyright
Arbitration Royalty Panel)regimes
Despite constitutional challenges and
concern that CRB would kill internet radio,
it seem generally to be working and
generally on time
Register of Copyright wants to empower it
more and move away from the Courts

The US Rate Court Mechanism

Historic concern with antitrust issues

CMOs as a necessary evil (Lunney)
Distinction between copyright collective which sets prices for its
members (e.g. ASCAP) & a copyright society which allows individual
owners to dictate terms (e.g. Copyright Clearance Center) (Lunney)
Public performance from Victor Herbert v. Shanley 242 U.S. 591 (1917)
Reliance on consent decrees and oversight by SDNY from 1934 to the
Second Amended Final Judgment (AFJ2) in 2001 to the present
Recent contempt proceedings against ASCAP
Problems with split ownership of songs
Problems with withdrawals of licenses and Pandora

US DOJ Antitrust Consent Decree

Review - ASCAP and BMI 2014
In particular, the Department requested that the public comment on the following issues:
Do the Consent Decrees continue to serve important competitive purposes today? Why or
why not? Are there provisions that are no longer necessary to protect competition? Are
there provisions that are ineffective in protecting competition?
What, if any, modifications to the Consent Decrees would enhance competition and
efficiency?
Do differences between the two Consent Decrees adversely affect competition?
How easy or difficult is it to acquire in a useful format the contents of ASCAPs or BMIs
repertory? How, if at all, does the current degree of repertory transparency impact
competition? Are modifications of the transparency requirements in the Consent Decrees
warranted, and if so, why?
Should the Consent Decrees be modified to allow rights holders to permit ASCAP or BMI
to license their performance rights to some music users but not others? If such partial or
limited grants of licensing rights to ASCAP and BMI are allowed, should there be limits
on how such grants are structured?
Should the rate-making function currently performed by the rate court be changed to a
system of mandatory arbitration? What procedures should be considered to expedite
resolution of fee disputes? When should the payment of interim fees begin and how
should they be set?
Should the Consent Decrees be modified to permit rights holders to grant ASCAP and BMI
rights in addition to rights of public performance?

Role of US Library of Congress,

Copyright Office and Register
of Copyrights

Report of February, 2015

UK IP Litigation System
(Gowers Report 2006)

UK Tribunal
2008 Select Committee Report and rapid
Government Response from 2008 The Work and Operation of the
Copyright Tribunal has led to new rules of procedure which
streamlined the processes of handling cases
Has one part time Secretary
Presided over by full time judge and other part time members as
needed on fee paid basis
Can move quickly on small applications i.e. Archive Media Sept.
30, 2010 to May 3, 2011 start to finish these are the exception
Contrast with Meltwater, which has involved referrals to High Court and
two lengthy decisions but both issued quickly one in three weeks
and other in five months from the hearing
Note that Tribunal can award costs
Deals with four or five cases per year

Australia
Welcome to the Copyright Tribunal of Australia Website
The Copyright Tribunal of Australia is an independent body administered by the Federal Court
of Australia.
The Tribunal was established under Part VI of the Australian Copyright Act 1968.
The Tribunal consists of a President, a number of Deputy Presidents and other members as
appointed by the Governor-General. A presidential member must be a judge of the Federal
Court of Australia. Other members must have a knowledge of, or experience in one of the
areas of expertise as set out in s. 140(2) of the Copyright Act, which includes law, industry,
public administration and economics.
The Tribunal has no physical resources of its own. The funds appropriated by Parliament
for the purpose of the Tribunal are managed by the Federal Court of Australia. Registry
services and administrative support for the Tribunal are provided by staff of the Federal
Court.
This web site provides information about the Tribunal's history, current practice, members and
decisions.
(emphasis added)
Note: A useful comparison between the Australian and Canadian tribunals can be found in Mario
Bouchard, Collective Management of Copyright and Related Rights (ed. Daniel Gervais, 2010)

More About the Australian Tribunal

Jurisdiction
Generally, the Tribunal has jurisdiction with respect to the following forms of licensing:
Statutory Licences; (or statutory exclusions from infringement) are created by the Act when specified conditions are satisfied.
These permit reproduction of certain copyright materials by educational institutions, institutions assisting persons with certain
disabilities.
Generally, statutory licences are characterised by provisions:

that the user must notify the declared society of the use being made of the copyright material, and, except where the user is the
Commonwealth or State Government, must undertake to pay to the declared collecting society for the use of the copyright
material, an amount described ( for example, as equitable remuneration), either as agreed, or, failing agreement, as
determined by the Tribunal;

Voluntary Licences; are the result of negotiation between a copyright owner or its representative, such as a collecting society,
and the licensee. Many of the Acts provisions relevant to voluntary licences depend on the notion of a licence scheme. Most
licence schemes are administered by collecting societies. Licences granted under licence schemes are often referred to as
blanket licences. They cover all works in the particular collecting societys repertoire.
Sections 154 to 156 contain provisions for reference to the Tribunal by a licensor and by would be licensees and organisations
representing them of existing and proposed licence schemes. The Tribunal has jurisdiction to confirm, or vary a licence scheme or
proposed licence scheme. It may also substitute a new scheme for the one referred to it.
Section 157 provides for various kinds of applications to the Tribunal by licensors and would be licensees and organisations
representing them, where there has been a failure to agree on the grant of a licence. Application may be made in cases to which
a licence scheme applies and in cases to which a licence scheme does not apply, by persons who require a licence or by
organisations representing them. The Tribunal is given power to make orders as to the charges and conditions the Tribunal
considers applicable under a licence scheme, or, depending on the circumstances in which the application is made, those charges
and conditions that the Tribunal considers reasonable in the circumstances, in relation to the granting of a particular licence.
Generally
The Tribunal may, of its own motion, or at the request of a party, refer a question of law arising in proceedings before it for
determination to the Federal Court of Australia (s 161).
The Tribunal is not bound by the Rules of evidence (s 164(b)).
Costs orders may be made by the Tribunal in any proceeding (s 174).

As Advised by Australian Tribunal

The Copyright Tribunal of Australia, is administered by staff of the Federal
Court, it has no full time administrative staff. No members are full time,
the judicial members the President and Deputy Presidents are all Judges of
the Federal Court of Australia. Lay members sit to determine matters as
required.
The Tribunal has no separate budget. It is funded as part of the Federal Court.
Matters tend to be conducted in a manner similar to matters before the
Federal Court, the length of time taken to prepare a matter will depend on the
matters complexity and the amount of expert evidence required.
A matter probably takes about two to two and a half years from filing of the
originating application to hearing.
The most recent case involving the music industry, related to the use of
copyright music material by Gyms.
We currently have three matters in the Tribunal; none involves the music
industry.
(emphasis added)

Recent Decisions from Australian Copyright Tribunal

May 2010
Phonographic Performance Company of Australia Limited (ACN 000680 704) under section 154(1) of t
he Copyright Act 1968 [2010] ACopyT 1 (17 May 2010)
October 2009
Phonographic Performance Company of Australia Limited under section 154(1) of the Copyright Act 1
968 (Cth) [2009] ACopyT 1 (29 October 2009)
December 2009
Australasian Performing Right Association Limited and Australasian Mechanical Copyright Owners So
ciety Limited [2009] ACopyT 2 (17 December 2009)
February 2008
Phonographic Performance Company of Australia Limited (ACN 000 680 704) under section 154(1) of t
he Copyright Act 1968 (Cth) [2008] ACopyT 1 (27 February 2008)
July 2007
Phonographic Performance Company of Australia Limited (ACN 000 680 704) under section 154(1) of t
he Copyright Act 1968 (Cth) [2007] ACopyT 1 (10 July 2007)
November 2007
Phonographic Performance Company of Australia Limited (ACN 000 680 704) under section 154(1) of
the Copyright Act 1968 (Cth) [2007] ACopyT 2 (15 November 2007)
2006 Copyright Tribunal Decisions
April 2006
Copyright Agency Limited v Queensland Department of Education [2006] ACopyT 1 (7 April 2006)
May 2006
Audio-Visual Copyright Society Ltd v Foxtel Management Pty Ltd (No 4) [2006] ACopyT 2 (3 May 2006)
September 2006

New Zealand Copyright Tribunal

Licensing scheme disputes
Licensing scheme disputes. Individuals or licensing bodies can make an application to the Tribunal
Licensing scheme dispute applications can be made about:
The reasonableness of an existing licensing scheme in a dispute between the operator
a scheme and a person claiming that they require a licence under the scheme
The terms of an existing licensing scheme
A proposed licensing scheme that is not yet in operation

of such

File sharing infringements

File sharing is where material is uploaded via, or downloaded from, the internet using an
application or network that enables the simultaneous sharing of material between multiple users.
Uploading and downloading may, but need not, occur at the same time.
Sections 122A to U of the Copyright Act 1994 provide a process for copyright owners to use when
they consider an internet user has infringed their copyright via a file sharing network.

Major Decision from NZ

A major 114 page 2010 decision re Phonograhic
Performances
A four week hearing
Hearing finished July 30, 2009 and decision
released May 19, 2010
Contains comment about comparators with other
tribunals and why they were not very useful
The tribunal had its jurisdiction extended under
the Copyright (File Sharing ) Amendment Act 2011

The Most Important Issue?

Antitrust

Antitrust

Antitrust

See Glynn Lunney in D. Gervais, Collective Management of Copyright and Related Rights in 2010; Ariel Katz,
Commentary: Is Collective Administration of Copyrights Justified by the Economic Literature? ;
Copyright Collectives: Good Solution But for Which Problem?

Why More Resources is Not

the Answer
INDU Committee: May 5, 2016
Mr. Earl Dreeshen: When the Copyright Modernization Act was passed in 2012, it added new
rights and new exceptions, as you mentioned in your address. It then expanded your
mandate and your
workload.
Are you able to manage that? Is it a serious issue? Is it something
you feel you have under control?
Mr. Claude Majeau: I wouldn't say that it's out of control, but it's difficult. It's a challenge
with the resources we have. As I mentioned in my presentation, there have been three
phases, plus major decisions of the Supreme Court of Canada, plus some decisions of
the Federal Court of Appeal, with respect to some procedural rulings of the board. All of
those together make it more and more difficult for us to deal quickly with all the tariffs
to be certified. We're not pleased with the time it takes us to render a decision.
Nonetheless, the realityand all those involved with the board's procedures will
recognize thisis that the complexities and volume we have to deal with are enormous.
Gilles, do you want to add my comments?
Mr. Gilles McDougall: I can only reinforce it. As the secretary general, I do see the push
on the resources. There are stakeholders who expect their tariffs to be certified much
earlier, and we just can't because we don't have the bodies to actually do the work. At the
board nothing can be done really automatically; it needs to be well organized and well
thought out.

Figures often beguile me, particularly when I have the arranging of them
myself; in which case the remark attributed to Disraeli would often apply
with justice and force: "There are three kinds of lies: lies, damned lies and
statistics."
-Mark Twain's Own Autobiography: The Chapters from the North American
Review
Illustration by Peter Newell from COSMOPOLITAN,
August 1898
http://www.twainquotes.com/Statistics.html

Prof. De Beer: Distribution of certified tariffs applicable for the years 1999-2013
(www.JeremyDeBeer.ca)

Prof. De Beer:
According to my data,852 different tariffs were certified by the
Copyright Board in respect of the 15-year period between and
including 1999-2013. There are 209 pending tariffs that were
proposed for that period but have not yet been certified. The
certified tariffs took an average of 3.5 years to certify after
filing. The average pending tariff has been outstanding for 5.3
years since filing as of March 31, 2015. On average, tariffs are
certified 2.2 years after the beginning of the year in which
they become applicable, which is in effect a period of
retroactivity. The standard deviation in the time from proposal
filing to tariff certification is 2 years. A hearing was held in 28% of
tariff proceedings. The average time from proposal filing to a
hearing in those proceedings was just over 3 years. The
average time from a hearing to tariff certification was almost
1.3 years.
(emphasis added)

Prof. De Beer: Statistics Regarding

Tariffs Certified With and Without
Hearings
(www.JeremyDeBeer.ca)

TYPES OF TARIFFS CERTIFIED

BY COPYRIGHT BOARD
BETWEEN 1999 - 2013

NUMBER CERTFIFIED
TARIFFS FROM 1999
2013 (including
redeterminations)

COMMENTS and LINKS TO ACTUAL DECISIONS

Educational Rights

Media Monitoring

Thistariffisnow extinct,sincethecollectivewasneverableto
recoveritscosts
Thisisaminortariffthathasoccupied little Board time.

Private Copying

Oppositiontothistariffhasessentiallyevaporated,sinceitnow
onlyappliestotheobsoletemediumofblankCDs.TheBoard
listseachyearfrom2012to2016asseparatetariffs,
but there were only two proceedings for that period.

Public Performance of Music

39

Reproduction of Musical Work

s

11

Reproduction of Sound Record

ings and Performers Perform
ances
Reproduction of Literary Work
s
Retransmission of Distant Rad
io & TV Signals
Arbitration

ThisisbyfarthemajorsectorcoveredbytheBoard.Thereare
47tariffslisted,but8oftheminvolvedbothSOCANand
Re:Sound(formerlyNRCC),sotheyshouldnotbecounted
separately.Thereare41 decisions between 1999 and 2013,
someofwhichconcernrelativelyminormatters.
Two of these are suspended by the Federal Court of Appe
al and one became interim as of November 7, 2012

The tariff, to the extent it concerns CSI, becomes interim

as of November 7, 2012.

TOTAL NUMBER OF TARIFFS

CERTIFIED

Number of tariffs per year on

average

2
4

There are 4 decisions, only one of which has resulted in an a

ctual tariff.
22 decisions,manyormostofwhichareproceduralorinterim

N/A

TheBoardhasrendered14 decisionsbetween1999and2014
allbutoneofwhich(nowpendingintheSCCinCBCv
SODRAC)wereinterim.ThesearenotpartofProf.deBeer's
analysisbutareincludedinthischartforthesakeof
completenesstoshowtheBoardslevelofactivity.Thesearenot
tariffsandeventhetermarbitrationisamisnomer.

74

Even this is an inflated number, and reflects a number of minor

redeterminations and other less than significant events. But is still the
Boards own number, as calculated from the Boards own posted
information. Still, this is less than 10% of Prof. de Beers number of 852.

4.9

This the total of 74 certified tariffs divided by the number of years being
studied (15). This is greater than the number of decisions per year,
since many of these tariffs are unopposed because they are unimportant or
the objectors cannot afford to participate in the Boards process, or for
other reasons such as the oppressive and intrusive interrogatory
process.

Tribunal/ Applicable

Mandate/# of Significant &

Substantive Decisions per year

# of Members

Copyright Board/No procedural

regulations in place other than
Boards informal and very general
Directive on Procedure

Setting Copyright Tariffs and Levies

pursuant to Copyright Act/
app. 3 per year. (S. 77 Unlocatable
decisions cannot be considered as
significant and have never involved
an actual hearing)

Up to 5 full time.
16
Currently 1 full time + 1
part time. Chair (currently
vacant) who must be a
sitting or retired judge.

3,514,185

Competition Tribunal/
Competition Tribunal Rules (SOR
/2008-141)

Dealing with wide range of

applications arising from Competition
Act/ app. 10 per year since 2000.

Up to six judicial
members from Federal
Court and not more than
eight lay members

3,184,043

Chair, two Vice-Chairs

and up to 10 national and
Regional Commissioners

437

Regulations or Rules re Procedure

CRTC/
Wide range of licensing and
Canadian Radio-television and Tele regulatory oversight in broadcasting
communications Commission Rules of and telecommunication, internet, antPractice and Procedure (SOR/2010- spam, etc./ app. 600-700 decisions a
277)
year many minor but many very
important, e.g. 2014

# of Staff
FTE

Budget (i.e. net cost

of operations)

(2013-2014)

(2014-2015)

17,586
(2013-2014)
(Expenses of 65,030
offset by revenues of
47,444)

Canadian International Trade

Tribunal/ See Act and Regulations
here.

international trade cases,

procurement cases, customs and excise
tax appeals and governmentmandated inquiries within the
Tribunals jurisdiction/
129 decisions in 2013-2014

Up to seven full time

members including a
chairperson

62

13,168,000

Canadian Industrial Relations

Tribunal/
Canada Industrial Relations Board Reg
ulations, 2012 (SOR/2001-520)

Handles more than 600 labour related

matters under Federal jurisdiction,
including Status of the Artist Act.
Processing times are published here.

Chair, two Vice-Chairs, up

to six full time members,
and additional part time
members

97

17,567,000

Trademarks Opposition Board/ See

Practice in Trademark Opposition Proc
eedings

Rules on oppositions to registration and

s. 45 expungement. Many of these
rulings involve hearings./
741 decisions rendered in 2011-2-12

App. 10 members and 12 s

taff

12

N/A

Supreme Court of Canada/

Rules of the Supreme Court of Canada
(SOR/2002-156)

Highest Court of Canada.

Nine full time justices.
Process more than 500 leave applicatio
ns and issues approximately 80 decisio
ns per year, on average about 4 months
after hearing and 15 months total dur
ation from application for leave to ap
peal
.

215

42,011,659

These are all public service

positions.

(net cost of operations

est. for 2013-2014)

Some Administrative Law Issues

That May Flow From More Resources
Vice-Chairman Majeaus recent INDU Committee
evidence of May 5, 2016:
What I would like to do at the board is to be able to pair an
economist and a lawyer per file, per tariff. Right now, if you
don't have sufficient staff, everyone is involved with
everything. This is what I would like to be able to do: to have
one lawyer, one economist per file, per hearing, per whatever

Whether or not more staff should/can be provided to

the worlds already largest copyright tribunal, there
are potential natural justice and procedural fairness
issues re:
Disclosure of background briefing material
S/He who hears must decide

My Comment on Resources
March 6, 2015
9. Why does the Board suggest that the length of time the Board takes
to render its decisions has anything to do with lack of resources? The
Board is already by an order of magnitude the largest tribunal of its
kind anywhere in the world. It has almost 10% of the budget of the
Supreme Court of Canada, but renders less than a handful of
significant substantive decisions every year. Few of these in turn are
inaugural. While I do not have precise figures, it would seem that
the cost of rendering one significant substantive decision by the
Board must already be among the highest such costs of any Court
or Tribunal in Canada and would be in the neighbourhood of about
$1,000,000 each. That is the cost to taxpayers, and does not
include the costs to parties of counsel fees and disbursements,
which are now apparently regularly exceeding $1,000,000 per
case, and may no longer justify the costs of participation for either
the collective or any objectors in some cases.
(emphasis added)

Where Do We Go From Here?

Boards 2015 consultation why it has been inconclusive
and ineffective my letter of April 17, 2015:
A number of submissions also noted and stated, in effect, that the
any productive working group would need to have a membership that
is broader than a small number of veteran and experienced Board
lawyers. The status quo may be working very well for some of them
and/or their clients. However, it is not working very well for many
stakeholders or the general public. Accordingly, if this consultation
process is to be of any value, it is essential that it reflect a fresh and
open approach that challenges certain long held assumptions and
practices that are arguably, if not clearly, no longer tenable.

Can the Board reimagine itself?

Possible regulations which can be done anytime by GIC
and/or Board itself with GIC approval
Possible legislation in 2017 review

Solutions to Avoid
Extended collective licensing, which may violate treaties and
which tends towards socialism
Any licensing of repertoire for which there is no chain of title
Unnecessary blanket licenses
Any solution that departs unnecessarily from technological
neutrality and/or that tends to preserve outmoded business models
Automatic assumption that collectives operate efficiently and
fairly internally
Automatic assumption that virtually any right can be efficiently
administered collectively without antitrust implications
Isolation of copyright tribunals from antitrust oversight
Reliance on non-independent witnesses as experts
Overly specialized tribunals
Insufficiently independent tribunals
Overly vague mandates

CRTC Suggestions from 2009

1. A Single Tariff-Setting Process for Radio
2. Obligations and Powers to Streamline
Proceedings
The CRTC recommends that the Copyright Act be
changed to require the Board to certify a single tariff
for the use of musical content by commercial radio
stations, establishing in a technology-neutral fashion
the value of the reproduction and communication
rights for musical works, sound recordings and
performers' performances in a single proceeding

3. Copying for Private Use

To Be Or Not To Be?
Whether or not more fundamental changes are
made, it now seems necessary to implement
regulations pursuant to powers already granted to
the Governor in Council pursuant to the Copyright
Act :
66.91The Governor in Council may make regulations
issuing policy directions to the Board and establishing
general criteria to be applied by the Board or to which
the Board must have regard
(a)in establishing fair and equitable royalties to be paid
pursuant to this Act; and
(b)in rendering its decisions in any matter within its
jurisdiction.

GIC Regulations?
Such regulations could deal with:
o procedural matters such as steps and deadlines
applicable to the parties and to the Board itself,
o case management procedures,
o application of rules of evidence,
o role of Board staff,
o the role of the Board in uncontested
proceedings,
o what constitutes a quorum, and
o how long and under what circumstances a
retired member can continue to deliberate on a
case.

More Possible GIC Regulations

On a more substantive level, such regulations could deal with:
general criteria such as when the Board should decline to consider
or certify a tariff,
interim tariffs and how tariff rates, terms and conditions are to
be determined.
Criteria for when the Board should utilize a direct reference to the
Federal Court of Appeal pursuant to s. 18.3 of the Federal Courts
Act, as suggested by Prof. Katz in Post-Secondary hearing. Note
recent important precedent of the CRTC value for signal case,
wherein the Supreme Court of Canada told the CRTC in 2012 that
it, as an administrative tribunal, cannot create new copyright rights
that arent found explicitly in the Copyright Act or other federal
legislation. This Supreme Court case began as a reference from the
CRTC to the Federal Court of Appeal.
Criteria for when the Board should request representations from
the Commissioner of Competition pursuant to s. 125 of the
Competition Act also suggested by Prof. Katz in the Post-Secondary

Copyright Board Regulations?

Regulations
66.6(1)The Board may, with the approval of the
Governor in Council, make regulations governing
(a)the practice and procedure in respect of the Boards
hearings, including the number of members of the Board
that constitutes a quorum;
(b)the time and manner in which applications and notices
must be made or given;
(c)the establishment of forms for the making or giving of
applications and notices; and
(d)the carrying out of the work of the Board, the
management of its internal affairs and the duties of its
officers and employees.

Even More Existential Options?

Further options, which could be dealt with by legislation,
include:
specification of qualifications of Copyright Board members
provisions empowering the Copyright Board to award costs
duration and permissible retroactivity, if any, of tariffs
merging the Copyright Board with either the Competition
Tribunal or the CTRC, both of which have somewhat
complementary mandates and proven ability to handle
complex and financially significant cases more expeditiously
than the Copyright Board
the abolition of the Copyright Board and establishments of a
sui generis application procedure to be dealt with by the
Federal Court, e.g. as is the case with the NOC regime.
Elimination of exemption from application of s. 45 of the
Competition Act and/or tariff setting activity except as
specifically permitted by GIC regulation

Conclusion