T-7060-82
Michael Bishop and Canadian Musical Reproduc
tion Rights Agency Limited (Plaintiffs)
v.
Martin Stevens, P.B.I. Records, Manacord Pub.,
François Pilon, Son Soleil Inc., Downstairs
Records Ltd., Unidisc Productions Ltd., Télé-
Métropole Inc., CRC Records Ltd. and Enregis-
trements Audiobec Canada Inc.—Audiobec
Recording Canada Inc. (Defendants)
Trial Division, Strayer J.—Toronto, October 15,
16, 17, 18 and 19, 1984; Ottawa, April 15, 1985.
Copyright — Pre-recording of song for broadcast —
Whether statutory licencing scheme in ss. 48-50 of Act
authorizing pre-recording for broadcast — S. 48 terms to be
interpreted by reference to other provisions in Act — S. 2
definition of "performance" silent as to recording, i.e. preser
vation of performance by mechanical or electronic means for
purposes of future performance — Act distinguishing record
ing from performing — Licencing scheme, limited to "per-
forming rights", not intended to cover recording rights —
Reliance on custom or convenience in industry of no assistance
— Resort to rules governing interpretation of contracts useless
as Act not ambiguous — Copyright Act, R.S.C. 1970, c. C-30,
ss. 2, 3(1)(a),(d), 12(4), 17(1), 19, 21, 22, 48, 49, 50 — Civil
Code of Lower Canada, art. 1016 — Copyright Act, 1956, 4 &
5 Eliz. 2, c. 74, s. 6(7) (U.K.) — Copyrights, 17 U.S.C. § 112
(1976) — Constitution Act, 1867, 30 & 31 Vict., c. 3 (U.K.)
/R.S.C. 1970, Appendix II, No. 51 (as am. by Canada Act
1982, 1982, c. 11 (U.K.), Schedule to the Constitution Act,
1982, Item 1), s. 91(23).
The facts, as well as a number of the issues in this case, have
been digested in the Editor's Note infra. This headnote is
accordingly restricted to the issue of the application of the
Copyright Act to pre-recording for broadcast.
Held, the portions of the videotapes containing the recording
at issue should be erased without further copying.
The defendant, Télé-Métropole, based its authority to pre
record the song on the broad interpretation of the word "perfor-
mance" given by Archambault J. in the Rochat decision. It was
held in Rochat that the right of performance included the right
to record the words and music on tape for public broadcast on
radio or television. The defendant contends that this interpreta
tion is authorized by the statutory licencing scheme set out in
sections 48 to 50 of the Act. Subsection 48(1) describes the
subject-matter to be "licences for the performance ... of ...
musical works". It speaks of performing rights societies that
have authority to "grant performing licences ...in respect of
the performance of its works". Those statutory terms must be
interpreted by reference to other parts of the Act. Section 2 of
the Act, which defines the word "performance" says nothing
about what is involved in recording, i.e. the preservation of the
performance by mechanical or electronic means for purposes of
future performance. Section 3 of the Act lists performing rights
separately from recording rights. Section 19 provides a distinct
regime for what is in effect a mandatory licence with respect to
recording. Thus, the Act clearly distinguishes mere performing
from recording. The statutory licencing scheme of sections 48
to 50 of the Act, limited as it is to "performing rights", was not
intended to embrace recording rights.
It is not open to the Court to say that performing rights
include recording rights but only in certain cases. The Court in
Rochat sought to do this when it said that the right of
performance included the right to record "for public broadcast
on radio or television" but not "for commercial purposes". Only
Parliament should be allowed to make such a distinction.
Failing legislative intervention in Canada, the owners and users
of mechanical rights can govern such arrangements by contract
in a manner which adequately recognizes their respective
interests.
The reliance on custom or convenience in the industry is not
helpful, and it certainly cannot be resorted to through the rules
for interpretation of contracts as was done in Rochat. There is
no ambiguity in the Act which justifies such an exercise.
CASES JUDICIALLY CONSIDERED
NOT FOLLOWED:
Rochat et Lefort c. Société Radio-Canada, judgment
dated September 27, 1974, Quebec Superior Court,
digested at [1974] C.S. 638.
CONSIDERED:
Blue Crest Music Inc. et al. v. Canusa Records Inc. et al.
(1974), 17 C.P.R. (2nd) 149 (F.C.T.D.).
COUNSEL:
R. T. Hughes, Q.C. and J. N. Allport for
plaintiffs.
J. A. Léger and L. Carrière for defendants.
SOLICITORS:
Sim, Hughes, Toronto, for plaintiffs.
Léger, Robic & Richard, Montreal, for
defendants.
The following are the reasons for judgment
rendered in English by
STRAYER J.:
EDITOR'S NOTE
The Editor has determined that the 28-page
judgment herein should be published in an
abridged version. One issue in this case was of
particular interest. That issue was whether the
provisions of the Copyright Act (R.S.C. 1970, c.
C-30) extend to pre-recording for broadcast. The
defendant, Télé-Métropole Inc., relied on Rochat
et Lefort c. Société Radio-Canada, a decision by
Archambault J. of the Superior Court of Quebec
dated September 27, 1974, digested at [1974]
C.S. 638, but Strayer J. was unable to agree with
the conclusion reached in Rochat. The reasons
for judgment on this issue (identified as issue (d)
in the conclusions portion of the reasons for
judgment) are here published in their entirety. The
omitted portions of the judgment have been
digested.
The plaintiff, Bishop, is a composer and an
associate member for the Performing Right Socie
ty Ltd. That is an English association for the
protection and enforcement of the copyrights in
music held by its members. He is a citizen of
Barbados.
In 1978, while working as a band leader in
Toronto he composed the music and lyrics for a
song entitled Stay. The music was forwarded to
the Society with a signed "notification of works"
form. Bishop's band performed Stay and "demo
tapes" were made.
In 1980, the defendant, Stevens, was a specta
tor in a Quebec city bar when Bishop's band
played the song Stay. Stevens is a recording
artist of popular songs. He was favourably
impressed with this song and conversed with the
plaintiff. While the parties differed in their recol
lections of that discussion, no written agreement
for Stevens to record the song was entered into.
Stevens nevertheless slightly changed the
song, gave it the title Please Stay and prepared a
French version entitled Ne t'en vas (sic) pas. In
1981 his recording was released. The French
lyrics were substantially different and not merely a
translation. An affidavit of an expert was filed. It
was to the effect that the "Stevens song" was a
substantial copy of the "Bishop song". This evi
dence was not controverted.
Although Bishop was aware that Stevens was
preparing a recording, he did not know it had
actually been made until a friend advised of
having heard the French version on the radio. The
record label showed Stevens as both the per
former and composer. It was a 45 rpm recording
having the English on one side and French on the
other. Bishop complained to Stevens who put the
blame on the publisher.
Also in 1981, Stevens participated in a pre
recording of a television broadcast at which the
recording of the French version was played and
he pretended to sing. Stevens took part in a
pre-recording of another television programme at
which he actually sang the French version.
Subsequent to these broadcasts Bishop signed
an "affiliation agreement" with the Canadian
Musical Reproduction Rights Agency (CMRRA)
which represents composers with respect to
recording rights. Under this agreement, CMRRA
gained the right to enforce Bishop's rights and to
take necessary legal action. CMRRA was a
co-plaintiff herein on the basis of this agreement.
In 1982, Bishop secured registration in the Copy
right Office of Stay.
By trial, it was clear that the plaintiffs had no
case in respect of the television broadcasts in
that the broadcaster had properly reported to the
Composers, Authors and Publishers Association
of Canada, Ltd. (cAPAc) use of the song and had
paid the appropriate fees. CAPAC had credited
Bishop with his royalties. The issue for determina-
tion was the song's pre-recording on videotape
for the two programmes.
The plaintiffs base their claim essentially on
paragraph 3(1)(d) of the Copyright Act which
provides as follows:
3. (1) For the purposes of this Act, "copyright" means the
sole right to produce or reproduce the work or any substantial
part thereof in any material form whatever, to perform, or in
the case of a lecture to deliver, the work or any substantial part
thereof in public; if the work is unpublished, to publish the
work or any substantial part thereof; and includes the sole right
(d) in the case of a literary, dramatic, or musical work, to
make any record, perforated roll, cinematograph film, or
other contrivance by means of which the work may be
mechanically performed or delivered;
Thus they say that he who owns copyright in a
musical work has the sole right "to make any ...
cinematograph film ... by means of which the
work may be mechanically performed or deliv
ered". The making of a videotape in contemplation
of a broadcast is the making of such a film, in
their view. Further they rely on subsection 17(1)
of the Act which provides that:
17. (1) Copyright in a work shall be deemed to be infringed
by any person who, without the consent of the owner of the
copyright, does anything that, by this Act, only the owner of
the copyright has the right to do.
They deny that any consent had been given by
Bishop, in their view the owner of the copyright,
for the making of such a record. They established
in evidence that the defendant Télé-Métropole has
retained the videotapes of these programs and
remains in a position to re-use them, copy them, or
sell them for others to use, quite apart from the
use which has already been made of them. They
contend therefore that before the videorecordings
were made of the song in the course of the produc
tion of these two programs, Télé-Métropole should
have obtained the consent of Bishop and should
have paid a negotiated fee. The plaintiffs called
evidence to indicate that an appropriate fee in such
a case would probably range from $50 to $100
(U.S.).
The defendant contends instead that Bishop had
consented to the making of the record, and that
the television appearances (including the pre-
recordings) were merely promotional activities
incidental to the making of the record. Further, it
variously contends that the Copyright Act does not
prevent recording for broadcast purposes, or,
seemingly, that by its statutory licence through
CAPAC to use the music for performing purposes,
i.e., actual broadcast, it had the implied authority
to use it for pre-recording for broadcast.
(a) Ownership of copyright
Strayer J. concluded that Bishop owned copy
right in the song Stay and that, as a citizen of a
Commonwealth country, he was entitled to the
protection of the Copyright Act. Nor had there
been any assignment in writing of copyright as
contemplated by subsection 12(4) of the Act. The
date of registration was relevant only with respect
to section 22 of the Act. Even where there was no
registration at the time of infringement, a plaintiff
could still be entitled to remedies in addition to an
injunction if the defendant was unable to prove
that, at the time of infringement, he had no
reasonable ground for suspecting that copyright
subsisted.
(b) Status of plaintiff CMRRA
It was argued that CMRRA lacked status in that
the "affiliation agreement" between it and Bishop
was entered into some months after the events in
question. It was further submitted that the agree
ment was contrary to public policy as one for
maintenance or champerty. The Agency could not
assert any claim for damages in respect of the
pre-recordings. To construe the agreement as
allowing the Agency to take legal action to recov
er amounts payable prior to signing the agree
ment would indeed make it champertous. The
Agency did, however, have an interest in respect
of future infringements. From the date of the
agreement, it had a direct financial interest in the
copyright because of the fees it would earn for
authorized dispositions.
(c) Consent
The Court accepted Bishop's evidence that his
approval of the recording of the song by Stevens
was subject to "proper channels" being followed.
Although Bishop was aware that Stevens was
preparing a recording, the former understood that
a formal arrangement as to profit sharing was to
be made prior to its release. It was not reasonable
for Stevens to assume Bishop's consent to its
being released. It followed that there could have
been no implied consent to Stevens' television
appearance to promote the record.
Reference might be made to the decision of
Collier J. in Blue Crest Music Inc. et al. v. Canusa
Records Inc. et al. (1974), 17 C.P.R. (2nd) 149
(F.C.T.D.). In that case a letter of conditional
approval mentioning the name of the office from
which mechanical licences could be obtained was
held not to constitute consent within subsection
17(1) of the Act. The so-called "consent" in the
instant case was even less formal: a conversation
in a bar.
(d) Application of Copyright Act to pre-record
ing for broadcast
This was regarded by all parties as the most
critical issue in the case. Essentially, the defendant
Télé-Métropole relies on the argument that either
the Copyright Act does not control such pre-
recordings, or that by virtue of sections 48-50 of
the Act it had, in effect, a statutory licence to
perform the song Ne t'en vas pas because Bishop,
through PRS [Performing Right Society Ltd.], was
represented by CAPAC. Télé-Métropole demon
strated, and this was not challenged, that it had
duly reported the performance of Ne t'en vas pas
on the two programs in question and had paid
royalties in respect thereto which were in due
course credited to Bishop through CAPAC and PRS.
Télé-Métropole contends that the performing
rights included the right to pre-record the song for
each of these two programs. It called evidence
from some major television broadcasters which did
clearly establish that the vast majority of their
program material is pre-recorded. Therefore, it is
contended, because this is the most practical way
to produce programs, having advantages of cost,
convenience, and quality, performing rights to
music must be taken to include the right to pre
record for broadcast purposes only.
The defendant Télé-Métropole relied heavily on
an unreported decision by Archambault J. in the
Superior Court of Quebec in the case of Rochat et
Lefort c. Société Radio-Canada, decided on Sep-
tember 27, 1974, digested at [ 1974] C.S. 638. In
that case the defendant had used the music to
which the plaintiff had the copyright as theme
music for a weekly program for a period of thir
teen weeks. While in that case there was an actual
written licence from CAPAC to the CBC with
respect to all works for which the Association had
the power to grant a performing licence, nothing
appears to have turned on that fact. As in the
present case, CAPAC represented the owners of the
copyright with respect to performing rights. It was
contended by the owners of the copyright that a
licence with respect to performing rights did not
include the right to pre-record their song for
broadcast purposes. Archambault J. seems to have
concluded that the scope of "performing rights"
should be defined, not in terms of the Copyright
Act, but rather in terms of the agreement by which
the owners of the copyright assigned their per
forming rights to CAPAC. In that agreement, para
graph 1(c) states that:
(French version)
le mot «exécution» désignera la reproduction ou l'interpré-
tation par quelque moyen que ce soit et les mots «exécution
publique» auront le sens correspondant.
(English version)
the expression "performing" shall mean performing by any
means and in any manner and the expression "performance"
shall have a corresponding meaning.
The learned Judge then apparently found some
ambiguity in this wording and proceeded to apply
article 1016 of the Civil Code which states that
where there is ambiguity in a contract one can
interpret it by reference to usage. He then relied
on the evidence that in the television industry most
broadcasts are pre-recorded. He apparently found
this to be a "usage" which could aid him in
interpreting the reference in the contract to "per-
forming rights". He concluded that:
[TRANSLATION] the right of performance ... includes the right
to record the words and music of the song on tape for public
broadcast on radio or television.
I must respectfully disagree with this conclusion.
The defendant is basing its authority to pre-record
the song on this broad interpretation of "perfor-
mance" which it says is authorized by the statu
tory licensing scheme under sections 48-50 of the
Copyright Act. Subsection 48(1) describes the
subject-matter to be "licences for the performance
... of ... musical works" or "licences pour l'exé-
cution ... d'oeuvres musicales". It speaks of per
forming rights societies that have authority to
" grant performing licences or to collect fees ... in
respect of the performance of its works" or "pos-
sède[nt] l'autorité d'émettre ou d'accorder des
licences d'exécution, ou de percevoir des honorai-
res ... pour ... l'exécution de ses oeuvres." These
statutory terms must be interpreted in the first
instance by reference to other parts of the Copy
right Act and not by the rules of the Civil Code of
Quebec with respect to the interpretation of con
tracts between owners of copyright and CAPAC.
These terms are defined in section 2 of the Act as
follows:
2. In this Act
"performance" means any acoustic representation of a work or
any visual representation of any dramatic action in a work,
including a representation made by means of any mechanical
instrument or by radio communication;
2. Dans la présente loi
«représentation» ou «exécution. ou »audition.. désigne toute
reproduction sonore d'une ouvre, ou toute représentation
visuelle de l'action dramatique qui est tracée dans une
oeuvre, y compris la représentation à l'aide de quelque
instrument mécanique ou par transmission radiophonique;
While it is possible that a recording session
involves a "performance" or "exécution" it clearly
involves more than that. These definitions say
nothing about the preservation of the performance
by mechanical or electronic means for purposes of
future performance. That is what is involved in
recording. It is no doubt for this reason that in
section 3 of the Act which specifically describes
various rights which are included in copyright,
performing rights are listed in paragraph 3(1)(a)
and recording rights are listed separately in para
graph 3(1)(d). There is clearly an additional or
distinct purpose in recording which distinguishes it
from mere performing. I therefore do not accept
that the statutory licensing scheme of sections 48
to 50 of the Act, limited as it is to "performing
rights", was intended to embrace recording rights.
This conclusion is, I think, reinforced by the fact
that section 19 of the Act provides a distinct
regime for what is in effect a mandatory licence
with respect to recording. While counsel for the
defendant insisted that any use not prohibited by
the Copyright Act is permitted, I have concluded
that this type of pre-recording is prohibited by
paragraph 3(1)(d).
I do not think the resort to custom or conve
nience in the industry is helpful. It certainly
cannot be resorted to through the rules for inter
pretation of contracts. While it might be appropri
ate in the field of statutory interpretation, where
the statute is ambiguous, to examine the alterna
tive interpretations to see which one would cause
less hardship or inconvenience, be more reason
able, or most consistent with the object of the Act,
there is not in my view an ambiguity in the Act
which would justify such an exercise.
It may be that with modern technology the Act
as it now stands leads to results inconvenient to
some. But in my view the Act distinguishes be
tween mere performing rights and recording rights
and it is not open to the Court to say that the
former includes the latter but only in certain cases.
Archambault J. sought to do this in the Rochat
case when he said that performing rights included
recording rights "for public broadcast on radio or
television" but not [TRANSLATION] "for commer
cial purposes". With respect, the Act nowhere says
that. It seems to me that this is a qualification or
distinction which, if it is to be drawn at all, should
be made by Parliament and not by the courts. It is
significant that in the United States and in the
United Kingdom legislation has been adopted per
mitting recording for broadcast purposes without a
separate copyright licence, but subject to certain
limitations with respect to the purposes for which
the recording may be used and the length or
purpose for which it can be kept: see Copyrights,
1976, U.S. Code, 1909, Title 17, § 112 (U.S.);
Copyright Act, 1956, 4 & 5 Eliz. 2, c. 74, s. 6(7)
(U.K.). These are arbitrary limitations which how
ever sound they may be in terms of public policy,
are not susceptible to judicial definition. Failing
legislative intervention in Canada, the owners and
users of mechanical rights can govern such
arrangements by contract in a manner which ade
quately recognizes their respective interests.
I therefore conclude that the statutory licence
which the defendant Télé-Métropole enjoyed with
respect to the performing rights in the song Stay
did not include the authority to pre-record the
song. In the absence of a licence with respect to
the use of the music for recording purposes, the
pre-recording thereof by the defendant amounted
to a breach of Bishop's copyright on both
occasions.
(e) Remedies
Compensatory damages should be fixed at
$150.
As to exemplary damages, their award is made
in cases where the defendant's conduct could be
characterized as deliberate or reckless. In the
case at bar, the television company acted in good
faith in supposing that Stevens had the right to
record the song in their studio.
Nor should an injunction issue. There was no
evidence that the defendant would continue to
infringe the plaintiffs' copyright.
The defendant's argument, that section 21 of
the Copyright Act (which provides for delivery up
of infringing copies and the plates used in their
production) is ultra vires as defining or altering
property rights, a matter within provincial jurisdic
tion, could not be accepted. In the exercise of its
head 91(23) jurisdiction over "Copyrights", Parlia
ment could incidentally affect property rights
otherwise within provincial jurisdiction. An order
will go directing that those portions of the video
tapes containing the recording of Ne t'en vas pas
be erased without further copying.
None of the arguments advanced for awarding
costs on a solicitor and client basis was compel
ling. The plaintiffs should, therefore, be awarded
costs on a party and party basis.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.