Royal Conservatory of Music v. Macintosh (Novus Via Music Group Inc.), 2016 FC 929

In this copyright infringement claim, the Applicants alleged that they own or control the copyright to 21 musical works and that the respondents published those works without permission. Further, the Applicants asserted that there had been improperly passing off their wares.

The Court initially dispensed with all three of the Respondents procedural objections, finding that the Court could accept physical evidence in this application, that the Applicants had standing to bring the application for all of the works and that the Federal Court had jurisdiction to hear the copyright infringement claim.

With respect to the substantive merits of the application, the Court agreed that the Respondents had infringed the Applicants' copyright, but did not find that there had been any passing off.

The facts, briefly, were that the Respondent Conservatory Canada published a series of musical books using the publisher Waterloo. The last two editions of the series, including the 2014 Edition, were published by different publishers. While the Applicants agree that, pursuant to the 1999 Agreement, they gave their consent to publish the works in question in a series, they argue that permission was granted to Waterloo, and that the Respondents lacked the necessary permission to publish the 2014 Edition.

As the parties were unable to locate a copy of the Agreement, the Court was left to reconstruct, on the best available evidence, the arrangements that took place between the parties. The Court ultimately found that the Applicants' interpretation of the Agreement, including that permission was granted to a publisher Waterloo and not the Respondents, was more persuasive.

The Court further found that there was no limitation period issue with respect to the copyright infringement. Whether the 2014 Edition is considered to be part of one continuous publication of the series and hence one ongoing breach, or a separate publication, the application was made within the limitation period.

The Court dismissed the Respondents' allegation that the Applicants engaged in copyright misuse or abuse of process. The theory of copyright misuse is not well-developed in Canada. However, the Court noted that, even if it were, the facts simply do not support any malfeasance or wrongdoing on the Applicants' part. The Court also dismissed the Respondents' claim that the Applicants' gave any implied consent to publish the works in the 2014 Edition, finding that the Respondents showed evidence of implied consent.

On the issue of damages, the Court agreed that that the infringement was commercial in nature, as the books were being sold commercially notwithstanding Conservatory Canada's status as a not-for-profit entity. The Court awarded per work damages at the lowest end of the commercial range for a number of reasons, inter alia, the infringement at issue appeared to be the product of poor record-keeping and rights management on the part of both parties.

Finally, the Court rejected the Respondents request that they be awarded costs on a solicitor-and-client basis. While the Court was sympathetic to the Respondents' position, and aware of the bad blood between the parties, the Court did not find any reason to take the unusual step of ordering costs against the winning party.