The Internet Taxi: Collective Management of Copyright and the Making Available Right, after the PentalogyJuly 31, 2013 by Daniel Gervais
Just after the adoption of Bill C-11, the Supreme Court of Canada handed down five decisions, which are now referred to as the “pentalogy”, to follow the heretofore famous trilogy. The pentalogy, like its three-legged predecessor, marked a significant shift in Canadian copyright policy. The five cases dealt in one form or another with collective management of copyright in that they originated from appeals of decisions made by the Copyright Board of Canada.
Of the five cases, two do not seem particularly controversial. In the first case, Re:Sound v Motion Picture Theatre Association of Canada, which involved the 1961 Rome Convention, a unanimous Court agreed with the Copyright Board that sound recordings embedded in movie soundtracks were not (or were no longer) to be treated as sound recordings under the Copyright Act, thus rejecting the application in Canada of an Australian precedent based on a similar fact pattern but on very different statutory language. Given the wording of section 2 of the Act, the outcome seems reasonable. While the Rome Convention might have led the Court to take a longer look at the appellants’ arguments that a pre-existing sound recording reproduced in a soundtrack is still a sound recording and/or that a new sound recording is created by ripping the soundtrack—based on the principle that statutes should be interpreted in accordance with treaties ratified or adhered to by Canada—the statute seems rather unambiguous in defining a soundtrack as something other than a phonogram because it is not exclusively “aural”. The idea that an existing sound recording ceases to exist under Canadian copyright law when (while) it is embedded in a soundtrack and re-emerges when ripped would deserve a longer comment, but the point is not one I wish to belabour here.
In the second case, Rogers v SOCAN, the Court decided (unanimously on this point) that a series of point-to-point on-demand transmissions of works constituted a form of communication to the public (covered by an exclusive right) even if each individual transmission was not, at least colloquially, public. The Court referred to the WIPO Copyright Treaty and the making available right in that context. That case was, I believe, rightly decided if the normative basis for the definition of “public” that has applied to signals sent to groups of private homes, hotel rooms, etc. (which, together, constitute a “public”) is to be followed.
Two of the three other cases in the pentalogy were 5-4 splits. Not surprisingly, they are controversial. I return to those two cases below. I will also mention the fifth (and last case) of the pentalogy, namely SOCAN v Bell, later on. It is not particularly controversial but it needs to be contextualized. However, before embarking on our review of the cases, I wish to take the reader for a quick a tour of ancient China and Greece…
Featured here is the first part of a book chapter written by Daniel Gervais, Professor of Law and Director of the Intellectual Property Program at Vanderbilt University. The full chapter is available for download here. The book is entitled “The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law” edited by Michael Geist, and is available for purchase or download here.
 Now An Act to amend the Copyright Act, SC 2012, c 20 <http://www.parl.gc.ca/HousePublications/Publication.aspx?Lan+guage=E&Mode=1&DocId=5697419&Col=2&File=4> [Bill C-11].
 Namely Théberge v Galerie d’Art du Petit Champlain inc., 2002 SCC 34,  2 SCR 336 <http://scc-csc.lexum.com/> [Théberge]; CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13,  1 SCR 339 <http://scc-csc.lexum.com/> [CCH]; and Society of Composers, Authors & Music Publishers of Canada v Canadian Association of Internet Providers, 2004 SCC 45,  2 SCR 427 <http://scc-csc.lexum.com/>[SOCAN v CAIP].
 International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, 26 October 1961, 496 UNTS 43 (entered into force 4 June 1998, accession by Canada 4 March 1998) <http://www.wipo.int/treaties/en/ip/rome/trtdocs_wo024.html> [Rome Convention].
 See Daniel Gervais, “The Role of International Treaties in the Interpretation of Canadian Intellectual Property Statutes” in O Fitzgerald, ed, The Globalized Rule of Law: Relationships between International and Domestic Law (Toronto: Irwin Law, 2006) 549.
 The term “phonogram” is defined in the Rome Convention to mean “any exclusively aural fixation of sounds of a performance or of other sounds” [emphasis added], Rome Convention, supra note 5, art 3(b).
 The court was unanimous on the copyright aspects of the case, though not on the administrative law—the standard of review—aspects. This would need to be studied in a separate paper, but somehow I am not entirely certain how one should reconcile ESA and Alberta (Education) (infra note 58) on this point.
 WIPO Copyright Treaty, 20 December 1996, WIPO Publication No 226, 36 ILM 65 (entered into force 6 March 2002) <http://www.wipo.int/export/sites/www/treaties/en/ip/wct/pdf/trtdocs_wo033.pdf> [WCT].