COPYRIGHT BOARD OF CANADA

SOCAN TARIFF 22.A MAKING AVAILABLE RIGHT

___________________________________________________________________________

SOCANS SUBMISSIONS ON THE MAKING AVAILABLE RIGHT ___________________________________________________________________________

Gowling Lafleur Henderson LLP Barristers & Solicitors Suite 2600, 160 Elgin Street Ottawa, Ontario K1P 1C3 D. Lynne Watt (613) 786-8695 lynne.watt@gowlings.com Matthew Estabrooks (613) 786-0211 matthew.estabrooks@gowlings.com Counsel for SOCAN

TABLE OF CONTENTS

PART I - OVERVIEW ...................................................................................................... 1 PART II - SUMMARY OF KEY CONCLUSIONS ............................................................ 1 PART III - BACKGROUND ............................................................................................. 3 PART IV - THE PROPER INTERPRETATION OF THE MAR ........................................ 5 PART V - HISTORY OF THE MAR ................................................................................. 6 PART VI - THE IMPLEMENTATION OF THE MAR IN OTHER JURISDICTIONS ....... 13 PART VII - IMPLEMENTATION OF THE MAR IN CANADA ....................................... 21 PART VIII - CONCLUSION ........................................................................................... 29

PART I - OVERVIEW 1. SOCAN asked the Board on November 28, 2012 to consider the legal effect of the

making available right which was introduced into the Copyright Act 1 (the Act) as new section 2.4(1.1) upon the coming into force of the Copyright Modernization Act 2 (the CMA) on November 7, 2012. Specifically, SOCAN asked the Board to rule on the interface between the making available right in section 2.4(1.1) and the decision of the Supreme Court of Canada in ESA v. SOCAN 3 and the companion case, Rogers v. SOCAN. 4 2. SOCANs position is that, as a result of new section 2.4(1.1), Internet music services are

liable to SOCAN when they post musical works on their Internet servers in a way that allows customers to have access to them from a place and at a time chosen by each customer, irrespective of whether the musical works are subsequently transmitted to end-users by way of downloads, streams or at all. PART II - SUMMARY OF KEY CONCLUSIONS 3. Section 2.4(1.1) 5 is a new statutory provision which serves to expand the scope of the

section 3(1)(f) 6 communication right to create liability for an act that was not the subject of liability prior to the amendment: the act of making works available. 4. The ESA decision, released prior to the amendments to the Act, told us that the

communication right covered only acts of transmission having the characteristics of public performances (e.g., conventional broadcasting activities) and that the communication right did

1 2

Copyright Act, RSC 1985, c C-42. Copyright Modernization Act, SC 2012, c 20, Royal Assent 2012-06-29 [Bill C-11]. 3 Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34 [ESA]. 4 Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35 [Rogers]. 5 Copyright Act, RSC 1985, c C-42, s. 2.4(1.1). 6 Copyright Act, RSC 1985, c C-42, s. 3(1)(f).

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not cover the delivery of copies of works which were substitutes for the distribution of physical hardcopies on which performance royalties were not payable. 7 5. With the introduction of the making available right (the MAR), Parliament has expanded

the protection offered by section 3(1)(f) to include the discrete act of making a work publicly available. The MAR is a truly technologically neutral right. Because the right attaches to the initial act of enabling on-demand access, it does not matter whether the subsequent act of transmission delivers a digital copy (i.e. a download) or delivers a performance (i.e. a stream), or even when there is no subsequent act of transmission at all. The act of making the work available for reception by the public is a separate act that is now protected by virtue of section 3(1)(f). 6. In ESA, the majoritys interpretation of Bishop 8 confirmed that two activities can result in

two royalties being payable. However, the majority went on to say that two royalties were not payable for downloads because the transmission of a permanent copy of a musical work is a single activity. 9 The CMA recognizes that a download now involves two separate acts protected by two separate rights: the act of making a work available, which is an act of communication; and the act of transmitting a permanent copy, which is an act of reproduction. 7. SOCANs interpretation of the meaning and effect of the MAR is fully supported by and

consistent with international agreements and the intention of the drafters of those agreements, which Canada had long indicated it would implement. 10 The amendments to the Act reflect the clear intention of Parliament to bring Canada into compliance with its international obligations under these treaties.
ESA, supra note 3 at para 127. Bishop v. Stevens, [1990] 2 SCR 467. 9 ESA, supra note 3 at para 41. 10 Convention of Berne for the Protection of Literary and Artistic Works, 828 U.N.T.S. 221, September 9, 1886; rev. in Berlin November 13, 1908, rev. in Rome June 2, 1928 [Berne Convention]; WIPO Copyright Treaty (WCT), Adopted in Geneva on December 20, 1996, and WIPO Performances and Phonograms Treaty (WPPT), adopted in Geneva on December 20, 1996.
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8. SOCANs interpretation is also consistent with interpretations and practice in other

foreign jurisdictions 11 where the MAR has been implemented and where SOCANs sister societies (other than in the U.S. where there is a different statutory regime) 12 collect royalties from the same services that operate in Canada, regardless of the manner by which they choose to transmit musical works to end-users. PART III - BACKGROUND Background Tariff 22 9. This issue is the latest chapter in the very long saga that has been SOCAN Tariff 22.

SOCAN first filed a tariff for the use of musical works on the Internet for the year 1996. That tariff, and SOCANs online tariffs filed thereafter, have so far resulted in four Supreme Court decisions, six Federal Court of Appeal (FCA) decisions, and four Board decisions. 10. In its Tariff 22 Phase I decision, the Board concluded that a musical work is

communicated when packets of data are transmitted over the Internet so that once reassembled, they allow the work to be performed, copied or otherwise conveyed or made known to the recipient. 13 11. The Board also concluded that a communication intended to be received by members of

the public in individual private settings is a communication to the public and that a person

See for example the European Community, the UK, Australia, and Japan, discussed in more detail below. In fact, the American legislation differs very significantly from its Canadian counterpart. In particular, the U.S. Copyright Act definition of perform expressly limits the U.S. communication right to instances where there is a transmission or communication of a performance of the work. Neither paragraph 3(1)(f) nor the other relevant sections in the Canadian legislation contain this important caveat. This was recognized by the Board: Decision of the Board dated October 18, 2007 certifying SOCAN - Tariff 22.A (Internet - Online Music Services) for the Years 1996 to 2006, Footnote 24. 13 Decision of the Board dated October 27, 1999 regarding SOCAN - Tariff 22 (Transmission of Musical Works to Subscribers Via a Telecommunications Service not covered under Tariff Nos. 16 or 17) [Phase I: Legal Issues], [Tariff 22, Phase I] at page 28.
12

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posting a file, intending that the file be accessed by more than a single recipient, is intending that the work be communicated to the public. 14 12. In subsequent decisions, both the Board and the Federal Court of Appeal held that

transmission of musical works over the Internet results in copyright liability because, as part of their commercial operations, the copyright users in question communicate information (musical works or substantial parts of musical works in the form of electronic data packets) to the public by telecommunication within the meaning of paragraph 3(1)(f). 15 13. Before the Supreme Court of Canada in 2011, ESA argued that the operators of Internet

game sites do not communicate musical works within the meaning of paragraph 3(1)(f) when they download video games containing such works to their customers. 16 Rogers et al. argued the operators of Online Music Services do not communicate musical works to the public within the meaning of paragraph 3(1)(f) when they download or stream musical works to their customers. 17 14. The Supreme Court agreed with ESA that the distribution by download of permanent

copies of musical works does not constitute communication of those of works 18 but rejected the argument of Rogers et al. that the point-to-point delivery of musical works by online music services was not to the public. 19

Tariff 22, Phase I, supra note 13 at page 30. Decision of the Board dated October 18, 2007, certifying SOCAN Tariff 22.A (Internet - Online Music Services) for the Years 1996 to 2006; SOCAN Ringtones, infra note 55;Canadian Wireless Telecommunications Association v. SOCAN, 2008 FCA 6; Entertainment Software Assn. v. Society of Composers, Authors and Music Publishers of Canada Inc., 2010 FCA 221; Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35; Shaw Cablesystems G.P. v. Society of Composers, Authors and Music Publishers of Canada, 2010 FCA 220. 16 ESA, supra note 3 at para 65. 17 Rogers, supra note 4 at para 21. 18 ESA, supra note 3 at para 127. 19 Rogers, supra note 4 at para 53 and 58.
15

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15. As of July 12, 2012, as a result of the ESA and Rogers decisions, SOCAN lost the ability

to collect royalties for the transmission of musical works in downloads but continued to have the right to collect them for musical works in streams. 16. On November 7, 2012, the Copyright Act was amended to, amongst other things, add

section 2.4(1.1) which provides: (1.1) For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public. 20 17. The proper meaning and effect of that provision is now before the Board for

determination as a question of law within the context of the pending SOCAN Tariff 22.A/ CSI Online Music Tariff proceedings and, potentially, other SOCAN tariffs. PART IV - THE PROPER INTERPRETATION OF THE MAR 18. It is SOCANs position that the new section 2.4(1.1) deems all acts of making works

available to be copyright-protected acts that are to be administered as part of the communication right. 19. The MAR amendment should be considered as introducing an additional component into

the communication right that grants the rights holder the exclusive right to do or to authorize the initial activity of making a work available in such a way that makes on-demand access to that work possible. The MAR is a new aspect of the communication right, functionally and conceptually distinct from the transmission of a work that results in permanent reproduction on an end-users device.

20

Copyright Act, RSC 1985, c C-42, s. 2.4(1.1).

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20. Essentially, the MAR creates an exclusive authorization right to the initial act of granting

public access to a digital file containing a copyright-protected work, whether any member of the public makes use of that access or not. This includes both the posting of a copy on an Internetconnected server as well as connecting a storage device containing authorized copies to the Internet. 21. In other words, the actions involved in making it possible for the public to access a work

on an on-demand basis are protected under the MAR, regardless of whether any subsequent dealing with the work is in the form of a download or stream. The person operating the server requires authorization from the copyright holder in order to make the file accessible to any member of the public. 22. In this way, the MAR is truly technologically neutral because it does not matter if the file

is subsequently downloaded or streamed or transmitted at all. What matters is that members of the public have access to the file at the time and place of their choosing. 23. The following section will show that this interpretation is consistent with the intentions of

both the drafters of the WIPO treaties which created the making available right and the manner in which the MAR has been implemented in the UK, the EC, Australia, and Japan. PART V - HISTORY OF THE MAR 24. The MAR was initially introduced in 1996 as part of the WIPO Copyright Treaty 21 (WCT)

and the WIPO Performances and Phonograms Treaty 22 (WPPT).

WIPO Copyright Treaty (WCT), Adopted in Geneva on December 20, 1996, http://www.wipo.int/treaties/en/ip/wct/trtdocs_wo033.html. 22 WIPO Performances and Phonograms Treaty (WPPT), adopted in Geneva on December 20, 1996, available online at: http://www.wipo.int/treaties/en/ip/wppt/trtdocs_wo034.html .

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25. Both the WCT and WPPT were introduced to address what were seen as gaps in the

previous international copyright agreement, the Berne Convention, which was seen as being inadequate to properly address the new uses of copyright works on the Internet. 26. The Berne Convention grants authors various rights of communication to the public. 23

The WIPO Treaties arose out of the perception that, while these rights were sufficient to deal with 20th century technologies, they offered authors inadequate protection after the advent of the Internet. 27. The WIPO treaties were intended to expand creators rights to fill in the gaps left by the

Berne Convention, specifically those related to digital works and the Internet. 28. Article 8 of the WCT recognizes the right of communication to the public which expressly

includes the MAR: ARTICLE 8 Right of Communication to the Public Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them. 29. Although the WPPT applies to phonograms and performances, it frames the MAR in a

similar way to the WCT and therefore is of assistance in interpreting the scope of the MAR. It too grants performers and producers of phonograms the exclusive right to make their

23

Berne Convention, supra note 10, arts 11, 13, 14.

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performances/phonograms available to the public in such a way that members of the public may access them from a place and at a time individually chosen by them. 24 Umbrella Solution 30. During the drafting of the above provisions, there was debate over how the MAR ought

to be implemented, specifically whether the MAR would fall under an existing Berne Convention right (and if so, which one) or whether the MAR would be a new right. 31. The delegates ultimately decided to draft the MAR in a way that was neutral with respect

to both technology and legal characterization. The resulting wording was considered an umbrella solution that allowed each Party to implement the MAR as it saw fit. WIPO describes the process as follows: 5.224 Differences in the legal characterization of digital transmissions were partly due to the fact that such transmissions are of a complex nature, and that the various experts considered one aspect more relevant than another. However, the most fundamental reason was that coverage of the above-mentioned two rights differs to a great extent in national laws. It became evident that it would be difficult to reach consensus on a solution based on one right over the other. 5.225 A specific solution was therefore adopted, which provided that the act of digital transmission should be described in a neutral way, free from specific legal characterization; that such a description should not be excessively technical and, at the same time, should convey the interactive nature of digital transmissions; that, in respect of legal characterization of the exclusive right that is, in respect of the actual choice of the right or rights to be applied sufficient freedom should be left to national legislation; and, finally, that the gaps in the Berne Convention in the coverage of the relevant rights the right of communication to the public and the right of distribution should be covered. This solution was referred to as the umbrella solution. 25

WIPO Performances and Phonograms Treaty (WPPT), supra note 22 arts. 10 and 14. The text of these sections is set out in full in Appendix B to this memorandum. 25 WIPO Intellectual Property Handbook: Policy, Law and Use at 271-272.

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32. The drafters of the WIPO treaties deliberately avoided attaching the MAR to any

particular existing right (e.g. reproduction or communication) in order to give each nation the freedom to determine how the MAR would be implemented. The WIPO treaties take an umbrella approach to the making available right whereby WCT Article 8 merely describes the acts to be protected, in a technology-neutral fashion, leaving the legal characterization of those acts to national legislatures. 26 In doing so, the WIPOs intention was to create a right that was technologically neutral and not subject to the means by which the work was ultimately delivered. 33. While the text of the WIPO treaties gives little guidance as to the form of the right, the

preparatory documents provide considerable insight into its intended substance. In a paper discussing the umbrella solution which was presented to the WIPO committee at the Harvard Symposium (a preparatory session which led to the copyright treaty), Dr. Mihaly Ficsor (former Assistant Director General of WIPO) wrote: The intention behind this solution is not just to get rid of the problem at the international level and pass it over to national laws, without appropriate guarantees for efficient protection. Therefore certain elements of such a solution are to be quite precisely identified as a condition of its workability; namely that: the relevant acts should be described as making available (works or objects of neighbouring rights) to the public; this making available to the public should cover all cases of making available, irrespective of the purpose of the act, namely irrespective of whether it is for the purpose of perceiving, studying, watching, listening to (with only at most a transient reproduction that may be necessary for such purposes) and/or it is for the purpose of

Mary W.S. Wong, The Exclusive Rights of Distribution , Communication to the Public & Making Available Under the WIPO Copyright Treaty: Lessons for Other Jurisdictions from the Hong Kong Bittorrent Case, <online: http://ssrn.com/abstract=1118809

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making copies [emphasis added] 34. (permanent or temporary); 27

Similarly, the notes that accompanied the draft wording which eventually became Article

8 provided as follows: 10.09 The provisions of Article 10 [which was renumbered as Article 8] consist of two parts. The first part extends the exclusive right of communication to the public to all categories of works, including any communication by wire or wireless means 10.10 The second part of Article 10 explicitly states that communication to the public includes the making available to the public of works, by wire or wireless means, in such a way that members of the public may access these works from a place and at a time individually chose by them. The relevant act is the making available of the work by providing access to it. What counts is the initial act of making the work available, not the mere provision of server space, communication connections, or facilities for the carriage and routing of signals. It is irrelevant whether copies are available for the user or whether the work is simply made perceptible to, and thus usable by, the user. 28 [emphasis added] 35. It is apparent from the foregoing that those involved in the process of drafting the Article

were of the view that making available was to apply in the case of both downloads and streams. 29 36. The interpretational difficulty arises because of the dual nature of digital Internet

transmissions. In the pre-digital era, the scope of copyright protection could neatly be divided into two categories: copy-related rights and non-copy-related rights. 37. Copy-related rights (such as the right of distribution, the right of rental or the right of

public lending) covered acts by means of which copies were made available to the public, typically for deferred use, since the making available and the perception occur at different times.

M. Ficsor, International Harmonization of the Protection and Management of Copyright and Neighboring Rights, in Naples Forum Book, 137-8, cited in M. Ficsor, The Law of Copyright and the Internet: The 1996 WIPO Treaties, their Interpretation and Implementation (Oxford: Oxford University Press, 2002) at 208. 28 Records of the Diplomatic Conference at 204, cited in Ficsor, supra note 27 at 243. 29 See notes 27 and 28, supra

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38. In contrast, non-copy-related rights (such as the right of public performance, the right of

broadcasting, and the right of communication to the public) covered acts through which works are made available for direct use where reception and perception occur simultaneously and where multiple members of the public perceive the performance at the same time. 39. However, digital transmissions scramble the beautifully arranged, dogmatically duly

characterized and justified picture of these two families of rights 30 in two ways. First, because of digital rights management technology, it is possible that one act of making available may lead to both a download (copy-related right) and a stream (non-copy-related right).
31

Second,

depending on the technology used, it may also be possible to deliver a copy of a copyright work while allowing for simultaneous perception as the copy is transmitted. In this case, both copyrelated rights and non-copy-related rights are implicated in the same transmission. 40. It is in response to this blurring of distinctions between categories of rights that the WIPO

treaties introduced the making available right. It is significant that the text of Article 8 uses the word may in the phrase in such a way that members of the public may access these works from a place and at a time individually chosen by them. This implies that the MAR relates to the mere possibility that a member of the public accesses the file. The right is engaged even where the work is not accessed at all. This would suggest that the downstream activity (downloading, streaming, both, neither, or something yet to be invented) is irrelevant to whether the right is engaged.

Ficsor, supra note 27 at 498. For example, Rdio offers both streams and downloads of musical works, although each work is made available on Rdios servers once. It is the user, by choosing to sync a song to her device, who decides how this file, which Rdio has made available, is delivered. Rdio allows users of mobile phones to either stream musical works over a mobile network or store those works on the mobile phone as a limited download. See http://help.rdio.com/customer/portal/articles/58982-iphone-app-guide
31

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41. The following figure 32 shows (in a very general way) the discrete events involved in an

Internet transmission: Figure 1

42.

As seen above, the act of making available, itself, is clearly one of the acts involved in

an Internet transmission. An act of making available occurs as soon as a work is made accessible to the public and that act is completed at the moment the work is made accessible regardless of whether the work is actually accessed. After the work is made accessible, any subsequent acts of transmission may be communications or reproductions. 43. In this sense, the MAR fits comfortably within the traditional notions of a right of public In conventional broadcasting a licence is required to broadcast copyright-

performance.

protected works over radio and television stations even where there is no one listening or watching.

Figure adapted from Andrew Christie and Eloise Dias, The New Right of Communication in Australia, [2005] SydLawRw 11; (2005) 27(2) Sydney Law Review 237.

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44. In the Internet scenario, the service will create a set of copies of a catalogue of works

and then make the works available to the public for purchase by download (e.g. iTunes) or streaming (e.g. Pandora ) or both (e.g. Rdio). 45. As discussed above, the WIPO treaties allow national legislators to attach the MAR to

either the distribution right (copy-related) or the communication right (a non-copy-related right). Alternatively, national legislators are also free to implement the MAR as a separate, freestanding right. The following section will examine examples of each of these three options, implemented by legislators in the European Community, the UK, Australia, and Japan. This will be followed by a discussion of the implementation in Canada. PART VI - THE IMPLEMENTATION OF THE MAR IN OTHER JURISDICTIONS The European Community 46. Article 3 of the EC Copyright Directive 33 provides as follows: Article 3 Right of communication to the public of works and right of making available to the public other subject-matter 1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them. [emphasis added] 3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article. 47. Here, the EC has implemented the MAR as an expanded right of communication to the

public. It is interesting to note the mention of exhaustion of rights in Art. 3(3). This deserves to
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, Official Journal L 167, 22/06/2001 P. 0010 0019.
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be noted since the issue of exhaustion normally does not emerge in the case of non-copyrelated rights. This would suggest that the EC considered that the MAR would include the transmission of digital copies of works, otherwise the reference would have been unnecessary. 48. This view is bolstered by the explanatory notes to the draft version of Article 8 of the

WCT (which at that draft stage, was numbered Article 10): 10.20 It should be pointed out that no rights are exhausted in connection with communication to the public. Should communication of a work result in the reproduction of a copy at the recipient end, the work may not be communicated further to the public or distributed to the public without authorization. Exhaustion of rights is only associated with the distribution of tangible copies. 34 [emphasis added] The UK 49. The UK Copyright, Designs and Patents Act 1988 was amended in 2003 in response to

the EC Directive and the following section was added to implement the making available right: 20 Infringement by communication to the public (1) The communication to the public of the work is an act restricted by the copyright in (a) a literary, dramatic, musical or artistic work, (b) a sound recording or film, or (c) a broadcast. (2) References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include (a) the broadcasting of the work; (b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them. 35

34 35

Records of the Diplomatic Conference, supra note 28 at para. 10.20. Copyright, Designs and Patents Act, (UK) 1988 c. 48 at s. 20.

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50. In Polydor Ltd & Others v Brown & Others, 36 the High Court accepted that section 20

would be engaged when a computer connects to the Internet and runs P2P software with copyright files placed in open directory. While the Court did not discuss the meaning of the section in detail, P2P sharing involves downloads and the Court found the MAR to apply: I am satisfied that on the evidence before me there has been an infringement, for these reasons: by s.16(1)(d) and 20 of the 1988 Act the copyright owner has the exclusive right to communicate the work, including sound recordings to the public, where such acts include the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them. Connecting a computer to the Internet, where the computer is running P2P software, and in which music files containing copies of the claimant's copyright works are placed in a shared directory, falls within the infringing act. This is a primary act of copyright infringement, and it does not matter whether the person knows, or has reason to believe, that what they are doing is an infringement, because innocence or ignorance is no defence. The mere fact that the files were present and were made available is sufficient for the infringement under s.20 to have been committed. 37 [emphasis added] 51. This decision supports the interpretation that the downstream actions (either download

or stream) are irrelevant to the making available right. The primary infringing act under s. 20 is situating the copyright works in such a way that the public has access to them. 52. Similarly, users who uploaded files to the P2P site The Pirate Bay were held to have

infringed the communication right in s. 20(2)(b) in Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors: 38 Counsel for the Claimants submitted that this issue does not matter for present purposes. For the purpose of their claim that
36 37

Polydor Ltd & Others v Brown & Others, [2005] EWHC 3191 (Ch). Ibid. at paras. 6-8. 38 Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 268 (Ch).

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users of TPB infringe under section 20, the Claimants focus upon users who allow copies of the sound recordings on their computers to be uploaded to the "swarm". Since it is clear from the evidence that UK users are involved as both uploaders and downloaders, it is immaterial whether the act of communication to the public is committed at the place of origination or the place of reception. I accept this submission. I turn, therefore, to consider whether such users thereby communicate such recordings available to the public. This involves two questions. First, do they communicate the recordings by electronic transmission? In my judgment they do. I consider that they make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b). In any event, however, it is clear from the CJEU's judgment in FA v QC Leisure at [193] that the concept of communication must be construed broadly. 39 [emphasis added] Australia 53. The Australian Copyright Act 40 was amended in 1999 to implement the WIPO Treaties.

The Australian Act sets out the exclusive rights as follows: 31 Nature of copyright in original works

(1) For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right: (a) in the case of a literary, dramatic or musical work, to do all or any of the following acts: (i) to reproduce the work in a material form; (ii) to publish the work; (iii) to perform the work in public; (iv) to communicate the work to the public; (vi) to make an adaptation of the work; (vii) to do, in relation to a work that is an adaptation of the first-mentioned work, any of the acts specified in relation to the first-mentioned work in subparagraphs (i) to (iv), inclusive; and
39 40

Ibid. at paras. 68-69. Copyright Act 1968 (Cth.) (Australia).

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(b) in the case of an artistic work, to do all or any of the following acts: (i) to reproduce the work in a material form; (ii) to publish the work; (iii) to communicate the work to the public; and (c) in the case of a literary work (other than a computer program) or a musical or dramatic work, to enter into a commercial rental arrangement in respect of the work reproduced in a sound recording; and (d) in the case of a computer program, to enter into a commercial rental arrangement in respect of the program. 41 54. Section 10 of the Australian Act defines communicate as follows: "communicate" means make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subjectmatter, including a performance or live performance within the meaning of this Act. 42 55. The Copyright Law Review Committee tasked with making recommendations for

copyright reform in Australia equated the distinction between the distribution right and the communication right (including the MAR) with the distinction between the dissemination of tangible and intangible copies. In its recommendation to the Australian parliament, the committee made this clear as follows: 4.14 With regard to the distribution of copyright material in intangible form, such as the distribution of digital material via the Internet, the Committee notes that this activity falls within the right of communication to the public. Specifically, such distribution is covered by the right of making available as provided under art. 8 of the WCT and arts. 10 and 14 of the WPPT. As part of the Digital Agenda reforms the Government has decided to implement a broadly based right of communication which includes a right of making available. The Committee therefore envisages that the distribution of copyright material in
41 42

Copyright Act 1968 (Cth.) s 31(1). Copyright Act 1968 (Cth.) s 10 communicate.

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both tangible and intangible form would be controlled through the exercise of rights that include the distribution right and the right of making available. The Committee notes that this approach should be contrasted with that taken in the United States where the right of distribution includes distribution by transmission (s. 106 of the US Act). 43 [emphasis added] 56. This view was confirmed in the explanatory memorandum which accompanied the 1999

amendments to the Australian Act: Item 6. Subsection 10(1) 13. Item 6 amends s.10(1) of the Act to insert a definition of communicate. The definition provides that communicate means make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter. The definition is central to the new right to communicate to the public (see Item 35). The term communicate is limited to the availability of material online or through electronic transmissions. It is not intended to cover the physical distribution of copyright material in a tangible form, which is adequately covered by existing provisions of the Act. The definition makes clear that an electronic transmission may occur as a result of a combination of paths or delivery mechanisms. For example, a communication over the Internet may involve a transmission that travels across copper wire, optic fibre cables and microwaves. 44 57. Taken together with the recommendations of the Copyright Law Review Committee, this

explanatory note confirms that, in Australia, the communication right (including the MAR) covers all on-demand transmissions of works in an intangible form, while the dissemination of physical copies is covered by the distribution right. 58. Australian legal commentators confirmed the view that there are two exclusive rights of

communication provided to copyright owners under Australian law: (i) the right to make a work available online and (ii) the right to electronically transmit a work and that these two rights

Simplification of the Copyright Act 1968, PART 2, Categorisation of Subject Matter and Exclusive Rights, and Other Issues, February 1999, available online: http://www.worldlii.org/au/other/clrc/5.html . 44 Copyright Amendment (Digital Agenda) Bill 1999, Explanatory Memorandum, available online: http://www.austlii.edu.au/au/legis/cth/bill_em/caab1999304/memo1.html .

43

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are conceptually different. 45 The rights are independent: under the Australian copyright regime, it is possible to make a work available without transmitting it and it is possible to transmit a work without first making it available on an on-demand basis. Japan the MAR as a standalone right 59. Japans amendments to that countrys Copyright Act 46 went further than the WIPO

minimum requirement and introduced a right of making transmittable. Article 23 of Japans Copyright Act provides as follows: (Rights of public transmission, etc.) Article 23(1) The author shall have the exclusive right to effect a public transmission of his work (including, in the case of automatic public transmission, making his work transmittable). (2) The author shall have the exclusive right to communicate publicly any work of his which has been publicly transmitted, by means of a receiving apparatus receiving such public transmission. 47 60. Article 2 of the Japanese Act includes the following definitions: "public transmission" means the transmission, by wireless communications or wire-telecommunications, intended for direct reception by the public; "automatic public transmission" means the form of public transmission which occurs automatically in response to a request from the public, excluding, however, public transmissions falling within the term "broadcast" or "wire-broadcast"; "to make transmittable" means making an automatic public transmission possible by any of the acts set out below

Andrew Christie et al. The New Right of Communication in Australia, Sydney Law Review, Vol 27:237, 2005, at 253. 46 Copyright Act, Law number: Act No. 48 of 1970, Amendment : Act No. 121 of 2006 (Japan). 47 Copyright Act, Law number: Act No. 48 of 1970, Amendment : Act No. 121 of 2006, Translation date: April 1, 2009 at Art. 23

45

20
61. The definition of to make transmittable then goes on to describe acts which amount to

either uploading a copy to an Internet-connected server or connecting a storage device to the Internet. 48 62. Note how the Japanese Act makes the distinction between synchronous and

asynchronous transmissions by excluding broadcast activities from the definition of automatic public transmission. Similar to the Australian Act, the Japanese Act differentiates between the act of making an on-demand transmission possible and the actual on-demand transmission. Observations on international implementations 63. The drafters of the WIPO treaties recognized that the future of digital media is access-

based and that the old dichotomy of reproduction and performance does not adequately protect the rights of creators online. Consequently, the WIPO treaties define the MAR as an access-based right. Several jurisdictions have implemented the MAR by expanding the scope of their communication right to include access-based activities, regardless of the form of subsequent transmission (if any) of the works to end-users. 64. Moreover, a categorical distinction between reproductions and communications is not

consistent with the licensing practices in many jurisdictions worldwide, including the UK, Australia and Germany, where royalty rates are all-inclusive, that is, licensees pay one rate for the reproduction right, performance right and/or distribution right as the case may be. 49 65. Dr. Mihly Ficsor has prepared an expert report that engages in a thorough discussion of

the history of the WCT and WPPT (in particular, the MAR), the international application of the MAR to both streams and downloads and the international licensing practices for online uses. Dr. Ficsors report is attached as Appendix C.
This is similar to the two ways in which works are made available in Figure 1 at para. 49, above. Decision of the Board dated March 16, 2007, Statement of Royalties to be Collected by CMRRA/SODRAC Inc. for the Reproduction of Musical Works, in Canada, by Online Music Services in 2005, 2006 and 2007 [CSI Online Music] at paras. 130-131
49 48

21
66. SOCAN submits that Canada introduced the MAR into the Copyright Act in s. 2.4(1.1)

with the intention of bringing Canada into compliance with its international obligations. As such, the Canadian MAR should be interpreted the same way as it is by the majority of the key signatories to the WIPO Copyright Treaties. 50 PART VII - IMPLEMENTATION OF THE MAR IN CANADA 67. Prior to the coming into force of the Copyright Modernization Act in 2012, Canadas

Copyright Act did not include a making available right as contemplated by the WCT and WPPT. Although it is a signatory to these treaties, Canada has not yet ratified them. Starting in 2005, the Government of Canada tabled a series of bills intended to bring Canada into a position where it could ratify the WCT and WPPT. Bill C-60 68. The first of these bills was tabled by Paul Martins Liberal Government on June 20, 2005

and was designated Bill C-60. Bill C-60 would have inserted a paragraph at s. 2.4(1)(a) of the Act which read: (a) a person who makes a work or other subject-matter available to the public in a way that allows members of the public to access it through telecommunication from a place and at a time individually chosen by them communicates it to the public by telecommunication 51; 69. Government publications regarding Bill C-60 were clear that this section was intended to

bring Canadas Copyright Act into compliance with Canadas obligations under the WCT and WPPT: The bill will propose the implementation of a number of copyright protections required by two World Intellectual Property Organization treaties (the WIPO Treaties) concluded in 1996 to address the Internet: the WIPO Copyright Treaty (WCT) and the
50

Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, [2004] 2 SCR 427, 2004 SCC 45, at para 149. 51 Bill C-60, First Session, Thirty-eighth Parliament, 53-54 Elizabeth II, 2004-2005, s. 2.

22
WIPO Performances and Phonograms Treaty (WPPT). These changes would provide rights holders with greater confidence to exploit the Internet as a medium for the dissemination of their material and provide consumers with a greater choice of legitimate material. The changes would also provide stronger remedies against the misuse of the Internet for disseminating material which infringes copyright. Proposed Amendments: In conformity with the WIPO, the existing exclusive communication right of authors would be clarified to include the making available right. In conformity with the WPPT, sound recording makers and performers would be provided the right to control the making available of their material on the Internet. 52

70.

The Government was defeated before Bill C-60 could be passed.

Bill C-61 71. In 2008, Stephen Harpers Conservative Government attempted to reform the Copyright

Act again and tabled Bill C-61 on June 12, 2008. Although Bill C-61 included an amendment that created a making available right for performers and producers 53, it did not repeat the explicit language from Bill C-60 with respect to a making available right for authors. The reason for this exclusion is that, at the time, the Conservative Government was of the view that the making available right for authors was already included in the existing communication right: The bill proposes a making available right that would give the rights holder the ability to determine whether and how their material is posted and shared online. The Act already provides authors with a making available right. The bill would extend such protection to performers and producers as well. 54 72. This was similar to the position that the Board had taken in its 2006 decision on Tariff 24

for Ringtones when, referring to its previous Tariff 22- Phase I decision, the Board noted that

Industry Canada and Canadian Heritage, Government Statement on Proposals for Copyright Reform (2005), online: Balanced Copyright <http://www.ic.gc.ca/eic/site/crp-prda.nsf/eng/rp01142.html>. 53 Bill C-61, 2nd Session, 39th Parliament, 56-57 Elizabeth II, 2007-2008, s. 7. 54 Canada, Reforming the Copyright Act Backgrounder (2008) online: Balanced Copyright <http://www.ic.gc.ca/eic/site/crp-prda.nsf/eng/rp01177.html> .

52

23
when a person posts a work on a server intending that it be accessed by the public, the person authorizes the communication of the work to the public. The Board said: In other words, as far as works are concerned, the authorization right [in s.3(1)] already includes the Treaty making available right. 55 73. Bill C-61 did not proceed past first reading because the 39th Parliament was dissolved in

September of 2008. Bill C-32 74. The Conservative Government continued its efforts to bring Canadas Copyright Act into

compliance with Canadas international obligations under the WCT and the WPPT by tabling Bill C-32 on June 2, 2010. During the time that this Bill was being tabled and debated, the Tariff 22.A, Phase 2 decision of the Board was under judicial review by the Federal Court of Appeal. 75. As discussed above, during the judicial review proceedings, a number of the Objectors

continued to argue that the Internet transmission of musical works did not engage the communication right under section 3(1)(f) both because they were not communications and they were not to the public. SOCAN actively lobbied the Government to include an express

MAR for authors to settle the issue by statute. 76. The preamble of Bill C-32 recognized that the current Copyright Act did not fulfil

Canadas international obligations related to copyright and the Internet: Whereas in the current digital era copyright protection is enhanced when countries adopt coordinated approaches, based on internationally recognized norms; Whereas those norms are reflected in the World Intellectual Property Organization Copyright Treaty and the World Intellectual

55

Decision of the Board dated August 18, 2006 certifying SOCAN Tariff 24 (Ringtones) 2003-2005 [SOCAN Ringtones] at para. 62.

24
Property Organization Performances and Phonograms Treaty, adopted in Geneva in 1996; Whereas those norms are not wholly reflected in the Copyright Act; 56 77. Bill C-32 reintroduced the explicit reference to a making available right for authors which

had initially appeared in Bill C-60 but had been removed in Bill C-61. Bill C-32 would have added s. 2.4(1.1), which provided as follows: (1.1) For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public. 57 78. Government background documents on Bill C-32 confirm the Governments intention to

bring Canada into compliance with its international obligations: Canadian creators, performers and artists will benefit from the full range of rights and protections in the WIPO Internet treaties, including an exclusive right to control how their copyrighted material is made available on the Internet. 58 79. Like Bills C-60 and C-61 before it, Bill C-32 died on the order paper.

Bill C-11 80. Despite the three previous aborted attempts to reform Canadian copyright law and to

bring it into compliance with international agreements, the Conservative Government persevered. The Government was finally successful with Bill C-11. The Bill was tabled on September 29, 2011 and received royal assent on June 29, 2012.

Bill C-32, Third Session, Fortieth Parliament, 59 Elizabeth II, 2010, Preamble. Ibid., s. 3. 58 Canada, Copyright Modernization Act Backgrounder (2010) <http://www.ic.gc.ca/eic/site/crp-prda.nsf/eng/h_rp01151.html>.
57

56

online:

Balanced

Copyright:

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81. Bill C-11 was virtually an exact duplication of Bill C-32 and included the same language

in the preamble and the added paragraph in s. 2.4(1.1). The majority of the Bill (including s. 2.4(1.1)) came into force on November 7, 2012. 82. In its Questions and Answers document on Bill C-11, the Government stated that the

Copyright Modernization Act will implement the rights and protections of the World Intellectual Property Organization (WIPO) Internet treaties. 59 Elsewhere in this document, the Government explicitly stated that Bill C-11 will bring Canada in line with international copyright standards: How will Canada compare internationally if this legislation is passed? By implementing the rights and protections of the 1996 World Intellectual Property Organization (WIPO) Internet treaties that establish copyright standards for the age of the Internet, this Bill will bring Canada in line with its G8 partners and most of the major economies of the Organisation for Economic Co-operation and Development. 60 83. This document also explained that Copyright owners will have new making available

rights to allow them to control how their works are made available online. 61 84. In its glossary of terms for Bill C-11, the Government gave the following explanation of

the making available right: Making available right An exclusive right of copyright owners to authorize the communication of their work or other related subject matter in a manner in which the time and place of receiving the communication can be individually chosen by members of the public (e.g., iTunes). 62

59

Canada, Questions and Answers, (2011) online: Balanced Copyright <http://www.ic.gc.ca/eic/site/crpprda.nsf/eng/h_rp01153.html#amend>. 60 Ibid. 61 Ibid. Emphasis in the original. 62 Balanced Copyright, Glossary, available online: http://balancedcopyright.gc.ca/eic/site/crpprda.nsf/eng/h_rp01190.html.

26
85. With the coming into force of the Copyright Modernization Act, Canada is finally in

compliance with its obligations with respect to the making available right set out in Article 8 of the WCT. The MAR is a separate communication activity 86. As noted in the preceding section, the Board had previously thought that the

communication right in s.3(1)(f) was broad enough to encompass making works available to end users at a time and a place of their choosing. However, SOCAN pushed for inclusion of a MAR for authors because of the uncertainty created by the Objectors on-going challenge that communication to the public by telecommunication required simultaneity of transmission with perception and simultaneity of experience by more than one member of the public. 87. With the introduction of s.2.4(1.1), Parliament has clearly recognized that the activity of

making a work available to the public in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public is now a protected activity which attracts liability under the Act if done without consent of the copyright owner. 63 88. As with the modernized copyright acts in the U.K., Japan and Australia, Canadas

Copyright Act now recognizes two separately-protected acts of communication: the act of making a work available for on-demand access and the act of transmitting a work by telecommunication. These acts may occur most commonly in sequence, but they are independent acts. A work may be made available without transmission; conversely, a work may be transmitted without first being made available to the public on an on-demand basis.

In the same way, Parliament amended the Copyright Act in 1997 to add joint and several liability of networks and their affiliates to s.2.4(1) to change the result in the decision of the FCA in CTV Television Network Ltd. v. Canada ( Copyright Board ), [1993] 2 FC 115.

63

27
Layering of Rights 89. Before the ESA decision, the Copyright Board had relied on the Bishop case when it

determined that both the communication right and the reproduction right could be engaged in a single transaction, i.e. the download of a musical work. However, in ESA, the majority of the Supreme Court essentially stated that the law in Canada requires that a single act be found to engage either the reproduction right or the communication right, but not both - the layering of rights is to be avoided. 90. The majority focussed on the mode of transmission (download versus stream) as the

deciding factor. The majority did not consider whether or not the making available of the work also engages copyright protection because the Act, at that time did, not contain a making available right for authors. 91. However, as a result of the coming into force of the Copyright Modernization Act

subsequent to the ESA decision, the communication right that was in issue before the Court in ESA and Rogers has changed with the introduction of the making available right it has been expanded. 92. The act of making available is independent both of the reproduction right that is engaged

during any initial copying of the work onto a server 64 or the resultant copy on the end-users computer and of the communication right that is engaged during a stream. 65 With the MAR, the liability of online music services arises irrespective of any transmission (by way of download or stream) that may occur once the work has been made available. 66 93. In SOCANs submission, the proper interpretation of the ESA majority decision is that

the single act involved in a download is limited to the end-users request for a copy of the
64 65

See Action #0 in Figure 1 at para. 43, above. The Board has long recognized that both of these acts of reproduction are protected by copyright. See CSI Online Music, supra note 49. 66 See Action #1 in Figure 1.

28
music file (which triggers its transmission) and the resulting permanent reproduction of the file on the end-users device. 67 The initial making available of the musical work on the online music services server is a separate act, which was not protected at the time of the ESA decision. 94. The new Act provides that, contrary to the decision in ESA, a download consists of at

least two actions, not one. These two actions are the initial act of making the work available (a communication) and the act of downloading (a permanent reproduction). 68 95. Parliaments intent to protect both aspects of an Internet communication separately is

similarly evident in its implementation of the communication right for performers and makers of sound recordings in compliance with Canadas obligations under the WPPT. 69 Section 19.1 of the amended Act sets out the activities which constitute publication of a sound recording. This section specifically contemplates both the making available component and the transmission component as separate acts of communication. 19.1 Despite subsection 2.2(1), a sound recording that has been made available to the public by telecommunication in a way that allows a member of the public to access it from a place and at a time individually chosen by that member of the public, or that has been communicated to the public by telecommunication in that way, is deemed to have been published for the purposes of subsection 19(1). 96. The fact that this section contemplates publication occurring either when a work is made

available or when it is communicated by telecommunication supports the view that each activity is a distinct aspect of the communication right.

i.e. Action #2 in Figure 1 at para. 44 As discussed in the preceding paragraphs, a download may actually involve three acts: an initial reproduction (or posting), making that posting available for access by the public, and then transmission to the end-user. The point is that the middle step, the activity of making the work available, is deemed by the CMA to be an act of communication. 69 WPPT. supra note 10.
68

67

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97. SOCAN submits that the same is true for musical works: a work is communicated when

it is made available to the public and/or when it is communicated to the public by telecommunication. SOCAN controls the MAR 98. SOCANs membership agreement defines performing right as: any right that now exists or may exist in the future under the law applicable anywhere in the world, of performance of any musical work in public by any means whether now known or later invented and in any manner, and of communication of any musical work to the public by telecommunication or authorizing or prohibiting any public performance or any communication of any musical work by means of telecommunication [emphasis added] 99. As the MAR provision in s.2.4(1.1) expressly states that it is included in the

communication right, which SOCAN controls via assignments from its members, this new right is controlled by SOCAN. PART VIII - CONCLUSION 100. The making available right is a new aspect of the communication right that applies to all

forms of on-demand Internet transmission. The MAR creates a communication right in the act of granting public access to an existing copy of a musical work, whether or not the musical work is ultimately transmitted to any member of the public or how it is transmitted. 101. In the case of streams, the MAR is engaged as an aspect of the communication right

that is engaged in the transmission of the stream. Similarly, in the case of downloads, the MAR is engaged in addition to the reproduction right that is engaged in the delivery of a permanent copy. SOCAN administers two aspects of the communication right for streams (making available and communication) and one aspect for downloads (making available).

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102. Online music services such as iTunes clearly make SOCANs works available to the

public within the meaning of s. 2.4(1.1). Similarly, online audio-visual services such as Cineplex make SOCANs works (as a part of audio-visual works) available to the public within the meaning of s. 2.4(1.1). 103. SOCAN submits that all services that make any of the musical works in SOCANs

repertoire available to the public at a time and place of the members choosing require a licence from SOCAN to clear the making available right set out in s. 2.4(1.1) of the Act. ALL OF WHICH IS RESPECTFULLY SUBMITTED this 8th day of March, 2013.

D. Lynne Watt

Matthew S. Estabrooks GOWLING LAFLEUR HENDERSON LLP Barristers & Solicitors Suite 2600 160 Elgin Street Ottawa ON K1P 1C3 Tel: Fax: 613-233-1781 613-563-9869

D. Lynne Watt (#35328C) Tel: 613-786-8695 Fax: 613-788-3509 lynne.watt@gowlings.com Matthew Estabrooks (#58028K) Tel: 613-786-0211 Fax: 613-788-3573 matthew.estabrooks@gowlings.com Solicitors for SOCAN

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APPENDIX A AUTHORITIES 1. 2. 3. 4. 5. 6. 7. Bishop v. Stevens, [1990] 2 SCR 467 Canadian Wireless Telecommunications Association v. Society of Composers, Authors and Music Publishers of Canada, 2008 FCA 6. CTV Television Network v. Canada (Copyright Board), [1993] 2 FC 115. Decision of the Board dated August 18, 2006 certifying SOCAN Tariff 24 (Ringtones) 2003-2005 [SOCAN Ringtones]. Decision of the Board dated March 16, 2007 certifying the CSI Online Music Services Tariff, 2005-2007. Decision of the Board dated October 18, 2007, certifying SOCAN Tariff 22.A (Internet Online Music Services) for the Years 1996 to 2006. Decision of the Board dated October 27, 1999 regarding SOCAN - Tariff 22 (Transmission of Musical Works to Subscribers via a Telecommunications Service not covered under Tariff Nos. 16 or 17) [Phase I: Legal Issues]. Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34. Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35. Shaw Cablesystems G.P. v. Society of Composers, Authors and Music Publishers of Canada, 2010 FCA 220. Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, [2004] 2 SCR 427, 2004 SCC 45.

8. 9. 10. 11.

Foreign Jurisprudence 12. 13. Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 268 (Ch). Polydor Ltd & Others v Brown & Others, [2005] EWHC 3191 (Ch).

Secondary Sources 14. Andrew Christie and Eloise Dias, The New Right of Communication in Australia, [2005] SydLawRw 11; (2005) 27(2) Sydney Law Review 237.

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15. 16. M. Ficsor, The Law of Copyright and the Internet: The 1996 WIPO Treaties, their Interpretation and Implementation (Oxford: Oxford University Press, 2002). Mary W.S. Wong, The Exclusive Rights of Distribution, Communication to the Public & Making Available Under the WIPO Copyright Treaty: Lessons for Other Jurisdictions from the Hong Kong Bittorrent Case. Industry Canada and Canadian Heritage, Government Statement on Proposals for Copyright Reform (2005), online: Balanced Copyright http://www.ic.gc.ca/eic/site/crpprda.nsf/eng/rp01142.html . Balanced Copyright, Glossary, available online: http://balancedcopyright.gc.ca/eic/site/crp-prda.nsf/eng/h_rp01190.html. Canada, Reforming the Copyright Act Backgrounder (2008) online: Balanced Copyright http://www.ic.gc.ca/eic/site/crp-prda.nsf/eng/rp01177.html . Canada, Copyright Modernization Act Backgrounder (2010) online: Balanced Copyright: http://www.ic.gc.ca/eic/site/crp-prda.nsf/eng/h_rp01151.html . Canada, Questions and Answers, (2011) online: Balanced Copyright http://www.ic.gc.ca/eic/site/crp-prda.nsf/eng/h_rp01153.html#amend . Simplification of the Copyright Act 1968, PART 2, Categorisation of Subject Matter and Exclusive Rights, and Other Issues, February 1999. available online: http://www.worldlii.org/au/other/clrc/5.html Copyright Amendment (Digital Agenda) Bill 1999, Explanatory Memorandum, available online: http://www.austlii.edu.au/au/legis/cth/bill_em/caab1999304/memo1.html . WIPO Intellectual Property Handbook: Policy, Law and Use

17.

18. 19. 20. 21. 22.

23. 24.

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APPENDIX B LEGISLATIVE PROVISIONS 1. Copyright Act, RSC 1985, c C-42, as amended: Section 2.4(1.1) Communication to the public by telecommunication (1.1) For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public. Section 3(1) Copyright in works For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right (a) to produce, reproduce, perform or publish any translation of the work, (b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work, (c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise, (d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed, (e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work,

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(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication, (g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan, (h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program, (i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and (j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner, and to authorize any such acts.

2. Convention of Berne for the Protection of Literary and Artistic Works, 828 U.N.T.S. 221, September 9, 1886; rev. in Berlin November 13, 1908, rev. in Rome June 2, 1928.
ARTICLE 11 Certain Rights in Dramatic and Musical Works: 1. Right of public performance and of communication to the public of a performance; 2. In respect of translations (1) Authors of dramatic, dramatico-musical and musical works shall enjoy the exclusive right of authorizing: (i) the public performance of their works, including such public performance by any means or process; (ii) any communication to the public of the performance of their works. (2) Authors of dramatic or dramatico-musical works shall enjoy, during the full term of their rights in the original works, the same rights with respect to translations thereof.

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ARTICLE 11bis Broadcasting and Related Rights: 1. Broadcasting and other wireless communications, public communication of broadcast by wire or rebroadcast, public communication of broadcast by loudspeaker or analogous instruments; 2. Compulsory licenses; 3. Recording; ephemeral recordings (1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing: (i) the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images; (ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one; (iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images, the broadcast of the work. (2) It shall be a matter for legislation in the countries of the Union to determine the conditions under which the rights mentioned in the preceding paragraph may be exercised, but these conditions shall apply only in the countries where they have been prescribed. They shall not in any circumstances be prejudicial to the moral rights of the author, nor to his right to obtain equitable remuneration which, in the absence of agreement, shall be fixed by competent authority. (3) In the absence of any contrary stipulation, permission granted in accordance with paragraph (1) of this Article shall not imply permission to record, by means of instruments recording sounds or images, the work broadcast. It shall, however, be a matter for legislation in the countries of the Union to determine the regulations for ephemeral recordings made by a broadcasting organization by means of its own facilities and used for its own broadcasts. The preservation of these recordings in official archives may, on the ground of their exceptional documentary character, be authorized by such legislation.

36
Article 13 Possible Limitation of the Right of Recording of Musical Works and Any Words Pertaining Thereto: 1. Compulsory licenses; 2. Transitory measures; 3. Seizure on importation of copies made without the author's permission (1) Each country of the Union may impose for itself reservations and conditions on the exclusive right granted to the author of a musical work and to the author of any words, the recording of which together with the musical work has already been authorized by the latter, to authorize the sound recording of that musical work, together with such words, if any; but all such reservations and conditions shall apply only in the countries which have imposed them and shall not, in any circumstances, be prejudicial to the rights of these authors to obtain equitable remuneration which, in the absence of agreement, shall be fixed by competent authority. (2) Recordings of musical works made in a country of the Union in accordance with Article 13(3) of the Conventions signed at Rome on June 2, 1928, and at Brussels on June 26, 1948, may be reproduced in that country without the permission of the author of the musical work until a date two years after that country becomes bound by this Act. (3) Recordings made in accordance with paragraphs (1) and (2) of this Article and imported without permission from the parties concerned into a country where they are treated as infringing recordings shall be liable to seizure.

Article 14 Cinematographic and Related Rights: 1. Cinematographic adaptation and reproduction; distribution; public performance and public communication by wire of works thus adapted or reproduced; 2. Adaptation of cinematographic compulsory licenses productions; 3. No

(1) Authors of literary or artistic works shall have the exclusive right of authorizing:

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(i) the cinematographic adaptation and reproduction of these works, and the distribution of the works thus adapted or reproduced; (ii) the public performance and communication to the public by wire of the works thus adapted or reproduced. (2) The adaptation into any other artistic form of a cinematographic production derived from literary or artistic works shall, without prejudice to the authorization of the author of the cinematographic production, remain subject to the authorization of the authors of the original works. (3) The provisions of Article 13(1) shall not apply.

3. WIPO Copyright Treaty, Adopted in Geneva on December 20, 1996 (WCT). ARTICLE 6 Right of Distribution (1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing the making available to the public of the original and copies of their works through sale or other transfer of ownership. (2) Nothing in this Treaty shall affect the freedom of Contracting Parties to determine the conditions, if any, under which the exhaustion of the right in paragraph (1) applies after the first sale or other transfer of ownership of the original or a copy of the work with the authorization of the author. ARTICLE 8 Right of Communication to the Public Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.

38
4. WIPO Performances and Phonograms Treaty, adopted in Geneva on December 20, 1996 (WPPT). ARTICLE 2 Definitions For the purposes of this Treaty: (f) broadcasting means the transmission by wireless means for public reception of sounds or of images and sounds or of the representations thereof; such transmission by satellite is also broadcasting; transmission of encrypted signals is broadcasting where the means for decrypting are provided to the public by the broadcasting organization or with its consent; (g) communication to the public of a performance or a phonogram means the transmission to the public by any medium, otherwise than by broadcasting, of sounds of a performance or the sounds or the representations of sounds fixed in a phonogram. For the purposes of Article 15, communication to the public includes making the sounds or representations of sounds fixed in a phonogram audible to the public. ARTICLE 10 Right of Making Available of Fixed Performances Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them ARTICLE 14 Right of Making Available of Phonograms Producers of phonograms shall enjoy the exclusive right of authorizing the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them. ARTICLE 15 Right to Remuneration for Broadcasting and Communication to the Public

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(1) Performers and producers of phonograms shall enjoy the right to a single equitable remuneration for the direct or indirect use of phonograms published for commercial purposes for broadcasting or for any communication to the public.

5. Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, Official Journal L 167, 22/06/2001 P. 0010 0019. Article 3 Right of communication to the public of works and right of making available to the public other subject-matter 1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them. [emphasis added] 3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.

6. Copyright, Designs and Patents Act (UK), 1988 c. 48. 20 Infringement by communication to the public (1) The communication to the public of the work is an act restricted by the copyright in (a) a literary, dramatic, musical or artistic work, (b) a sound recording or film, or (c) a broadcast. (2) References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include (a) the broadcasting of the work;

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(b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them.

7. Copyright Act 1968 (Cth.) (Australia).

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Interpretation

(1) In this Act, unless the contrary intention appears: ... "communicate" means make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter, including a performance or live performance within the meaning of this Act.

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Nature of copyright in original works

(1) For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right: (a) in the case of a literary, dramatic or musical work, to do all or any of the following acts: (i) to reproduce the work in a material form; (ii) to publish the work; (iii) to perform the work in public; (iv) to communicate the work to the public; (vi) to make an adaptation of the work; (vii) to do, in relation to a work that is an adaptation of the first-mentioned work, any of the acts specified in relation to the first-mentioned work in subparagraphs (i) to (iv), inclusive; and (b) in the case of an artistic work, to do all or any of the following acts: (i) to reproduce the work in a material form; (ii) to publish the work;

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(iii) to communicate the work to the public; and (c) in the case of a literary work (other than a computer program) or a musical or dramatic work, to enter into a commercial rental arrangement in respect of the work reproduced in a sound recording; and (d) in the case of a computer program, to enter into a commercial rental arrangement in respect of the program.

8. Copyright Act, Law number: Act No. 48 of 1970, Amendment : Act No. 121 of 2006 (Japan) Article 2 "public transmission" means the transmission, by wireless communications or wire-telecommunications, intended for direct reception by the public; "automatic public transmission" means the form of public transmission which occurs automatically in response to a request from the public, excluding, however, public transmissions falling within the term "broadcast" or "wire-broadcast"; "to make transmittable" means making an automatic public transmission possible by any of the acts set out below

Article 23 (1) The author shall have the exclusive right to effect a public transmission of his work (including, in the case of automatic public transmission, making his work transmittable). (2) The author shall have the exclusive right to communicate publicly any work of his which has been publicly transmitted, by means of a receiving apparatus receiving such public transmission.