Thursday, February 15, 2018

How a Polish Holocaust Story Became the Basis of a Controversial Copyright Case in Canada’s Federal Court

There has been a lot of news lately about Holocaust remembrance and a proposed Polish law that would criminalize references to “Polish death camps” and complicity of the Polish nation in atrocities carried out against the Jews during that period. As the Washington Post reports on February 2, 2018: “The law would essentially ban accusations that some Poles were complicit in the Nazi crimes committed on Polish soil, including in the Auschwitz-Birkenau extermination camp, where  more than 1.1 million people died. Germany operated six camps in Poland where Jews and others that the Nazis considered enemies were killed.”

Despite the extremely dark side of what happened in in Poland before and during the Holocaust, there are many stories about incredibly and extraordinarily brave Polish people who risked everything to save Jews from the Nazis and Nazi sympathizers in Poland.  Many of these heroes have been honoured as Righteous Among the Nations by the Israeli Holocaust memorial institution, Yad Vashem. One such particularly poignant story concerns Franciszka Halamajowa and her daughter Helena, two Polish-Catholic women who saved 15 Jews and a German defector. Eight of them were family members of Judy Maltz, who, together with Barbara Bird and Richie Sherman, made a wonderful documentary about this story. They were my clients in an unsuccessful copyright infringement lawsuit in the Federal Court of Canada alleging copyright and moral rights infringement of their documentary.

I get asked a lot about the controversial case of Maltz v. Witterick and Penguin, 2016 FC 524 (CanLII), I’ve been asked to speak about it at a law school. After this judgment of the Honourable Mr. Justice Keith M. Boswell of the Federal Court, which was devastating to my clients, and the substantial costs award against them of $39,200, they decided not to pursue an appeal – though I did serve and file a Notice of Appeal (see below), which outlines in some detail what would have been argued on appeal. For the reasons discussed below, the appeal was subsequently discontinued.
In response to this ruling, my clients decided to make their documentary freely available online and indicate their rationale for doing so on Ms. Maltz’s Facebook page, which provides a link to the free video. The DVD can also be purchased online via Amazon, if you want a higher quality version. Here’s the official website for the film.

In a nutshell, my clients created an acclaimed film documentary in 2009 about a very brave Polish woman, Francisca Halamajowa, who at enormous risk hid and cared for three Jewish families and a defecting German solider in the pig sty, attic, and a hole dug under the kitchen of her tiny little house in the village of Sokal during WWII. A Toronto investment fund manager named Jennifer Witterick saw the film at a screening in Toronto in 2012 and then wrote a book called “My Mother’s Secret”, which was self-published in early 2013. It was subsequently published by Penguin in several languages and several countries.  The book was described by the author as a work of fiction. However, it appeared for a long time on the Globe and Mail’s non-fiction bestseller list. My clients alleged that Witterick’s book infringed their copyright and moral rights.  I will not comment on the case or the decision any further at this time. I may do so one day in greater detail. Meanwhile, interested readers may wish to refer to documents provided below.

The Notice of Appeal spells out in considerable detail why my clients believe that the case was wrongly decided. Nonetheless, my clients chose not to pursue the appeal, already having incurred the  significant costs award for their loss in the Federal Court. Unlike Ms. Witterick, my clients are not wealthy. Penguin obviously has huge resources.  After their experience in the Federal Court, my clients did not wish to risk further losses in terms of costs payable to the other side in the event that the appeal might not have succeeded. Because much of the trial judgment would likely have been argued to be in the nature of fact finding, there was a real risk that an appeal might have failed based upon the usual great reluctance of the Federal Court of Appeal to second-guess the trial judge on findings of fact.

In the meantime, it may be useful to those who are interested in the case, including copyright law professors and their students, to have convenient access to the following documents which have filed with the Federal Court and Federal Court of Appeal and are on the public record:

Amended Notice of Application dated September 23, 2014 which includes in detailed chart form the 30 instances of what was alleged to be verbatim or nearly verbatim copying. Note that this was an “application”, in contrast to an “action”, and there was, accordingly, no document such as a statement of defence responding to it directly.

The above, of course, is by no means the entire record, which includes many volumes of affidavits, transcripts of cross-examination, expert affidavits and cross-examinations, and countless exhibits which are referenced in the memoranda.  However, these documents provide further information for those interested in this case.


Wednesday, November 08, 2017

Maybe the Canadian Copyright Bar and the Copyright Board Should Try Some PMNOC Remedies Instead of Rearranging the Deck Chairs?

(deck chairs you know where awaiting rearrangement...)

On November 3, 2017, I spoke at the University of Toronto Sixth Annual Patent Law Conference, on the “promise” issue and its treatment in parallel proceedings with very interesting timelines by a NAFTA ISDS tribunal and Supreme Court of Canada. I shall have a lot more to say about that later in a separate posting.

The conference opened with the panel discussion chaired by Chief Justice Crampton of the Federal Court about how the Court would deal with the new regime that will eliminate the troubled two track PMNOC applications and litigation proceedings regime that has existed for many years in the federal court. Even under the old system, the Court was required by law to deal with the “NOC Applications” (where in rem validity and infringement were not determined) within 24 months from start to finish including the judgment. Under the new system, as required by CETA, the proceedings will be in the form of an action with discoveries and live witnesses (in contrast to an application in which there was no oral evidence) and will also deal with in rem validity and infringement determinations. All of this must be dealt with within 24 months from beginning to end, which will include a hearing of normally two weeks maximum to take place at least three months before the end of the two-year period so as to allow the judge time to write a judgment. Here is how the Court has spelled out how this will be done. Based on the Court’s admirably transparent and useful statistics for the last several years, it is safe to assume that there will be dozens of such proceedings per year for the foreseeable future. There are about 40 active judges on the Federal Court. However, many are “supernumerary” which means that they usually carry about half of a normal case load – which can still be considerable. They each have only one clerk. There is no in-house research facility. The vast case load of the Federal Court ranges from admiralty to extradition to land claims to environmental issues and much more in terms of jurisdiction, including countless immigration files which are obviously extremely important to the individuals involved. Many cases are immensely complex both legally and factually and can involve enormous amounts of money and huge public policy issues. Most Federal Court judges manage to issue an important judgment every month and judgments are expected normally within six months after a hearing, which normally takes place within one to two years at most after the proceeding is commenced. Many proceedings are very competently and often aggressively “managed” (i.e. moved along) by Case Management judges (who are sometimes Prothonotaries with more limited powers than Judges). 

This should serve as a much-needed reality check on what is happening, or more accurately not happening, at the Copyright Board. The Copyright Board rarely holds more than two or three contested hearings a year and rarely issues more than five actual “tariffs” per year. Very few of the matters coming before the Copyright Board are ever nearly as complex factually or legally as these pharmaceutical patent cases, which also usually involve very large amounts of money.

And yet, everyone knows that for contested matters the Board typically takes more than four years even to get to a hearing and more than three years thereafter to render a decision that is almost invariably and often successfully challenged in the Federal Court of Appeal and, six times in the last five years or so, taken to the Supreme Court of Canada. These decisions are invariably retroactive for several years causing great doubt and uncertainty for all concerned, and often unexpected windfalls or liabilities as the case may be. Even the uncontested matters move at barely more than a glacial pace.

If the Federal Court, which has a very broad mandate and enormous caseload based on a vast range of subject matter, can deal with dozens of pharmaceutical patent cases each year and dispose of actions including discoveries and two-week trials from beginning to end including judgment in 24 months or less, surely it is not too much to expect similar performance results from the supposedly expert and specialized Copyright Board with its tiny fraction of the Federal Court’s caseload. However, it is clear that the only way that this will happen is with specifically mandated legally imposed deadlines as we are now seeing in the Federal Court and have seen elsewhere. All the talk about increased resources for the Copyright Board, which is not only unnecessary but potentially even very counterproductive, and the rearranging of specifics, such as they are, of the procedural steps in the Board’s Model Directive on Procedure, and other suggested tinkering, will be of no effect in the absence of legislation and/or regulations that set forth the basic procedural steps and deadlines for meeting them. Many of the submissions in the recent consultation effort involving suggestions for fixing the Copyright appear to be pulling their punches, or not even punching at all or in the right direction.

The Federal Court, the PMNOC bar and ISED are to be congratulated for dealing decisively with a very urgent, vast and complex situation that is, by any measure, much more difficult than that facing the Copyright Board.  The Copyright bar and the Copyright Board have much to learn from this example and, if they ignore it or fail to learn from it, may do so at their considerable peril. The Minister of ISED may wish to consider a process to encourage - and if necessary require - such learning and instruction.

Note that the Board has recently issued an astonishing number of notices directed toward holding hearings involving countless parties and consolidating several proposed tariffs no later than May and June of 2018 in an apparent effort to accelerate the imperceptibly glacial pace of its previous proceeding. This is notwithstanding the onslaught of judicial review resulting from the Board’s extremely belated and very likely incorrect ruling on the so-called “making available” right and the tariff itself more than 39 months after the retirement of Chairman William Vancise who presided over that already long delayed matter. Here are the key notices:

Online Music Services (SOCAN: 2014-2018; Re:Sound: 2013-2018; CSI: 2014-2018; CMRRA: 2014-2018; SODRAC: 2014-2018; Artisti: 2016-2018)
Internet - Audiovisual Content and User Generated Content (SOCAN: 2014-2018; CMRRA: 2016-2018; SODRAC: 2015-2018)

The first matter is very intertwined with the “making available” morass, which could have and should have been resolved many years ago by means of a simple reference to the Federal Court of Appeal. Instead, the Board allowed what should have been at the most a simple legal question to turn into an immensely complicated and unnecessary battle of international experts and then, in turn, failed to decide the legal issue quickly and separately from the rate determination. The result is five judicial review applications that cannot foreseeably be determined in time to avoid a potential train wreck of a hearing next June or, at the least, immense wasted expense on interrogatories and experts. If the Board follows through on this schedule that will result in a June 2018 hearing before the FCA has ruled (and potential SCC involvement), the resulting potential for chaos is painful to contemplate. If the parties object to this sudden rush, the Board may suggest that it is the parties to blame for the slowness of proceedings. On the other hand, parties may have their own reasons at this time for being deferential to the Board on this file. There is plenty of blame to attribute all around for the present state of affairs – and at this point, undue haste may create even more waste.

On both of the above files, there are a great many other notices that follow, which can be found here.

The Board’s apparently sudden and  frenetic activity -  especially in the face of active judicial review that could render much of this to be a waste of considerable time and resources - is doubtless going to be perceived as being a reaction to the Senate and the Government’s concern and  consultation effort concerning the Board and the S. 92 review about to begin. Whether or not the Board can get to these hearings by May and June of 2018 - or whether the many parties so accustomed to slower and more leisurely proceedings let this happen – remains to be seen. Whether the consequences of this new infusion of administrative adrenalin with lead to clarity or chaos also remains to be seen.

The obvious solution to the overall problems at the Board that can no longer be ignored is that the Government should ensure through regulations and, if necessary, legislation, that:
  • Timelines are set, as in the case of PMNOC matters, that result in tariffs being determined with reasons within a finite time. If 24 months works for pharmaceutical patents, it should also work for Copyright Board tariffs with no exceptions.
  • Copyright Board tariffs should never be retroactive – or at most only minimally so to the necessary extent, consistent with Supreme Court of Canada jurisprudence going back to 1954. See Maple Leaf Broadcasting v. Composers, Authors and Publishers Association of Canada Ltd. [1954] SCR 624 at p. 631. See also Canadian Broadcasting Corp. v. SODRAC 2003 Inc., [2015] 3 SCR 615, 2015 SCC 57 (CanLII) at paras 109-111 where I, along with Prof. Ariel Katz and Prof. David Lametti, as he then was, succeeded in getting retroactivity on to the Supreme Court’s radar screen in the modern era.

Longer term solutions, such as a change of “machinery” that might create a new tribunal perhaps merged with the Competition Tribunal, should also be considered, as I have already suggested to the Senate and in the current consultation.


Friday, October 27, 2017

Submissions Posted on Canada's Copyright Board - the Consultation Process

The papers submitted re consultations re the Copyright Board have just been published here.

There’s lots to say. But I would first note that Music Canada – the leading lobby group for the Canadian music industry – has highlighted the mandatory tariff issue and mentioned the York University case by name, along with “the K-12 and post-secondary markets”:

Music Canada also notes a concerning development whereby users are taking the position that they have the right to elect whether they want to be bound by certified tariffs set by the Board, even when they make uses of works covered by tariffs.17 This has the potential to undermine participation in the tariff process and makes enforcement of tariffs more difficult. Music Canada does not agree that users have the right to election to opt out of approved tariffs (or interim or continuation tariffs) certified under the section 67 or 70.1 tariff process. However, clarity in this regard would usefully put an end to this process which undermines the Board’s legitimacy and process.

See page 13 of the Music Canada submission along with the footnote on that page.

This underscores the importance of Prof. Katz’s comments in his recent blog about the York University decision, which should be read again  by all those contemplating an intervention in the appeal. 

My own submission about the Board, which is NOT 233 pages long but rather only a modest 36 pages in length is here. Many of the links in it aren’t working and got lost on their way to the Government website. I’ll try to post a version with working links when I get a chance.


Thursday, October 12, 2017

Copibec Class action against Université Laval - Update and Opt-out information - Deadline is October 16, 2017

Image result for laval university logo
For interested readers, here is Copibec’s website with information about its controversial class action against Universit√© Laval in the Quebec Superior Court:

The deadline for opting out is Monday, October 16, 2017.

Here is some backbground on this case from my blog of February 14, 2017.


Monday, September 25, 2017

Access Copyright v York University - Copy of Notice of Appeal Filed September 22, 2017

Here, thanks to the efforts of our articling student Scott Tremblay who obtained this from the Court, is York's Notice of Appeal.

I will have something to say about this at a later date.

Potential interveners take note.


Access Copyright v York University Files its Notice of Appeal - Waiting for a Copy

York University has finally - just 10 days ahead of  the extended deadline of October 2, 2017  provided by the Rules because it's summer - filed its Notice of Appeal on Friday, September 22, 2017. HT to @amacek and his wonderful notification service available here.

I've asked York's Counsel for a copy. Otherwise, I'll have to get it from the Court - which could take some time, unless I get lucky. It's a public document - but that does not necessarily mean it's available to the public as soon as it's filed.

I know everyone is interested and potential interveners will be getting ready to start their engines.... so stay tuned....

If anyone gets it sooner than me, please pass it along and I'll post it - with or without acknowledgement of the source, as you wish. As I say, it's a public document.

Anyway, here's the Court's Docket entry below....



Proceedings Queries


Additional information on A-259-17

Table listing additional information
Type Nature of Proceeding Office Language Type of Action Filing date
Federal Court of Appeal Appeal (S.27 - Final) - Copyright Act Toronto English Non-Action 2017-09-22


Party Information

Table listing party information
Party Name Solicitor Lawyer(s) / file no


Related Cases

Table listing related cases information
Court Number Style of Cause Nature of Proceeding

Thursday, September 14, 2017

The Blacklock’s Perfectly Predictable Costs Appeal Dismissal & a Preview of Potential Problems

The Federal Court of Appeal (“FCA”) heard Blacklock’s appeal of Justice Barnes’ costs ruling on September 12, 2017 and perfectly predictably dismissed the appeal with costs. The FCA not only ruled “from the bench” but, as I understand, did not even call upon the Attorney General of Canada to respond. As practicing lawyers well know, this means that Blacklock’s did not raise any issues that even needed an oral response. This was a decidedly decisive disposition.

The FCA’s judgment, which is somewhat surprisingly specific for a judgment from the bench, is available here. Notably, the FCA:
  •           Agreed with Justice Barnes that the issues – primarily the fair dealing issue – were “well-settled in the jurisprudence and, thus, neither novel nor of public significance” (para. 5)
  •           Ruled that Justice Barnes’ costs award was “amply supported” by the factors in the rules and that the Federal Court considered, among other things:

o   the respondent’s success in the litigation and the one-sided nature of the outcome,
o   the appellant’s litigation strategy,
o   the existence of a settlement offer,
o   the complexity of the litigation, and
o   the actual costs of the respondent.

The FCA effectively concluded that Blacklock’s submission that “the Federal Court should not have relied upon the appellant’s non-acceptance of the respondent’s settlement offer because this was a test case designed to settle issues arising in related proceedings” worked against Blacklock’s. Indeed, the Court concluded that “Further, to the extent this was a test case, this could have prompted a higher level of activity by the respondent and, thus, would have justified an elevated costs award.”

Appeals of Judge’s costs judgments are very rarely successful because such judgments are “quintessentially discretionary” and an appellant must establish “palpable and overriding error” in order to succeed. This case was particularly predictable because Justice Barnes judgment was so careful and detailed. What was not so obviously predictable is the extent to which the FCA actually reinforced Justice Barnes’ costs ruling. The FCA awarded costs of $3,500 for the appeal.

In my earlier blog entitled Blacklock’s Litany of Litigation Lengthens - Update on Four More Federal Court Actions, I made the following comments about Blacklock’s appeal of Justice Barnes’ $65,000 costs award:
 Costs judgments are normally very difficult to appeal successfully.  The $65,000 award in this instance flows directly from the normal  “mid-point of Column III” approach as explained by Justice Barnes in paragraph 6 of the costs judgment.  The Government was also able to benefit from the “double costs” rule because of “the failure by the Plaintiff to accept an early settlement offer in the amount of $2,000.00” (para. 4). Costs decisions by judges are “quintessentially discretionary” and are rarely set aside on appeal.
Blacklock’s’ resounding initial defeat on the fair dealing issue in Justice Barnes’ careful and convincing judgment (not appealed) and the resulting $65,000 costs award (which is being appealed) together with the Government’s clear and able determination to fight back and its success to date may be of interest to all Blacklock’s copyright litigation defendants, including those outside the Government, who may be considering with their counsel their next steps, such as whether or not to settle or to continue to fight back and to utilize strategic settlement offers.

Blacklock’s faces some further predictable problems. It would seem apparent that Blacklock’s “litany of litigation”, as I have called it, is not going very well for it. It has suffered three very clear and explicit setbacks at the hands of very experienced judges of the Federal Court and Federal Court of Appeal. Blacklock’s did not appeal the substantive judgment of Justice Barnes, which is a now a binding precedent that will be applied by the Federal Court in similar cases. Justice Barnes’s substantive and costs judgments and the FCA’s approval of the latter are all unusually tough, trenchant, and presumably very problematic for Blacklock’s. There is not only a clear comment about the “well-settled” jurisprudence on fair dealing. There is also a clear roadmap on the record as to the strategic use of settlement offers that may enable a defendant to recover “double costs” in appropriate circumstances in similar cases if Blacklock’s persists and insists on going to trial.

It is important to note Justice Barnes’s words in his costs judgment that has just been upheld:
[7] …I also reject the Plaintiff's argument that this case raised "strong public interest considerations". Rather, this case was about the Plaintiff's attempt to recover disproportionate damages without any apparent consideration to the legal merits of the claim or to the costs that it imposed on the taxpayers of Canada.
[8] Any reporter with the barest understanding of copyright law could not have reasonably concluded that the Department's limited use of the subject news articles represented a copyright infringement. Indeed, the fair dealing protection afforded by section 29 of the Copyright Act, RSC, 1985, c C-42, is so obviously applicable to the acknowledged facts of this case that the litigation should never have been commenced let alone carried to trial.
 [9] I am also troubled by Plaintiff's attempt to claim an excessive amount of damages beginning with its demand for compensation completely divorced from the Department's limited use of the two articles. In no circumstances would Blacklock's losses have exceeded the cost of individual subscriptions by the six officials who read the articles; yet Blacklock's demanded a license fee equivalent to its bulk subscription rate of over $17,000.00. This practice appears to be consistent with Blacklock's usual approach which is to hunt down, by Access to Information requests, alleged infringers and then demand compensation based on an unwarranted and self-serving assertion of indiscriminate and wide-spread infringement. The record discloses that in several instances government departments acquiesced for business reasons and paid the full amounts demanded. In this instance the Department appropriately took a hard line and succeeded in its defence.
(highlight, underline and emphasis added)

Blacklock’s faces other potential procedural hurdles and predicaments depending on the results of case management proceedings underway. There will be an important case management hearing at 90 Sparks St. in Ottawa on Monday, September 18, 2017 at 10:30 AM involving 13 cases against the Government of Canada and some of its agencies. It will deal, inter alia, with whether there should be a trial on the question of whether Blacklock’s even has standing to bring these actions and, whether, in the event that liability is ever established, what the quantum of damages might be. Blacklock’s is asking that it be allowed to proceed to trial against Health Canada and one “non-AG Canada Defendant” and that “pending the disposition of the actions described above, all other actions case managed by the Federal Court relating to copyright infringement of the Plaintiff be stayed”.

I shall follow up in due course.




Tuesday, September 12, 2017

Blacklock's Loses Appeal of Justice Barnes' Costs Order: Dismissed from the Bench

From the Federal Court of Appeal Docket:

Court Number :A-25-17
Style of Cause :1395804 ONTARIO LTD. (c.o.b. BLACKLOCK'S REPORTER) v. AGC
Proceeding Category :AppealsNature :Appeal (S.27 - Final) - By or Against the Crown
Type of Action :Non-Action

34 records found for court number A-25-17
DocDate FiledOfficeRecorded Entry Summary
-2017-09-12OttawaThis matter comes on for hearing on 12-SEP-2017 at Ottawa before The Honourable Mr. Justice Stratas The Honourable Mr. Justice Webb The Honourable Mr. Justice Near Appearances: Me Yavar Hameed (613) 232-2688 # 228 for the appellant Me Sarah Sherhols (613) 670-8492 for the respondent Language of Hearing: E Court Usher: M. Young, Shawn Duration: on 12-SEP-2017 from 09:30 to 10:45 Courtroom : Federal Court of Appeal Courtroom - Ottawa Court Registrar Therese Fadel Total duration: 1h 15min. Before the Court: appeal Result: dismissed Reasons delivered from the Bench Documents filed at hearing: 21 "Bill of Costs" Comments: Dars was used for the Hearing of this matter. Minutes of Hearing entered in Vol. 223 page(s) 229 - 231 Abstract of Hearing placed on file

(highlight added)

Blacklock's has lost its appeal of Justice Barne's costs ruling. I will post reasons when they are available.

It will be recalled that Blacklock's did not appeal Justice Barnes' substantive decision.