In a decision just released in Society of Composers, Authors and Music Publishers of Canada v. Entertainment Software Association, 2022 SCC 30,the Supreme Court of Canada confirmed that Canada fully implemented its WIPO copyright Internet Treaty “making available” obligations through a combination of the communication to the public, reproduction, and authorization rights. In doing so, the Court held that any unauthorized act of making a work available online, and any subsequent unauthorized streaming or downloading of the work, are infringing. The decision also reaffirmed the principle that domestic statutes — including the Copyright Act (the “Act”) — that are intended to implement international treaties should generally be interpreted in a manner consistent with those treaties and that the standard of review on questions of law decided by the Copyright Board is correctness, not reasonableness.

Background

The Court’s decision focused on whether — and if so, how — Canada implemented its international obligations under the WIPO Copyright Treaty (“WCT”). The WCT is one of two multilateral treaties negotiated in 1996 (the other is the WIPO Performances and Phonograms Treaty (the “WPPT”)) for the purpose of adapting international copyright rules to new and emerging technologies. It sets out a number of protections that member countries must provide to authors. Of relevance to the appeal is art. 8, which provides that:

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.

In 2012, the Copyright Modernization Act (“CMA”) amended the Act. Among other changes, the CMA introduced three “making available” provisions: ss. 2.4(1.1), 15(1.1)(d), and 18(1.1)(a). Sections 15(1.1)(d) and 18(1.1)(a) apply to performances and sound recordings and were not directly at issue in the appeal. Section 2.4(1.1) applies to works. It amended s. 3(1)(f), which gives authors the right to “communicate the work to the public by telecommunication”, by clarifying that,

[f]or the purposes of [the Copyright 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.

The key questions for the Court were to discern what rights the WCT required Canada to implement and how Canada implemented these rights.

What the WCT Requires

The Court confirmed that art. 8 of the WCT has two goals: “(1) clarify that on-demand transmissions are captured by the right to communicate works to the public; and (2) ensure that authors can control the act of making their works available online.” The Court expanded on these requirements, quoting from leading international authorities on the construction of the WCT:

[80] The Berne Convention needed to be updated again in response to on˗demand technologies. By the 1990s, it was clear the Berne Convention protected authors when their works were distributed throughtraditional “push” technologies like radio and cable broadcasts. But it was not clear whether it also protected authors when their works were distributed through newer “pull” technologies like on-demand transmissions. While it was possible to read the Berne Convention as applying to on-demand technologies, uncertainty existed…

[81] Article 8 resolved this ambiguity …. It clarified that the right of “communication to the public” (an existing Berne Convention right) applied to on˗demand transmissions:

The WCT’s principal innovation is its specification that the right of communication to the public includes a right of “making available. . .”. This right targets on-demand transmissions (whether by wire or wireless means), for it makes clear that the members of the public may be separated both in space and in time. . . . [I]t was possible to interpret the Berne Convention to cover at least wired on-demand transmissions of certain kinds of works, but it was not clear that the Berne Convention required member states to extend the communication to the public right to these transmissions. The WCT therefore supplies the missing mandate …

[82] Article 8’s first goal was therefore to clarify that the right to communicate works to the public (a performative activity) applied to on-demand technology. This was “neither a reaffirmation nor a novelty, for it resolves an ambiguity as to whether the old communication to the public rights accommodated or excluded ‘pull technologies’”…

[83] Article 8’s second goal was to ensure that authors could control when their works were made available online. The appellants, respondents, and their experts generally agree that art. 8 requires that member countries give authors the right to control the act of offering their works for downloading or streaming. The academic literature overwhelmingly supports this view: Reinbothe and von Lewinski, at p. 108; Bently and Sherman, at p. 45; United States Copyright Office, The Making Available Right in the United States: A Report of the Register of Copyrights (February 2016), at pp. 13-14; B. B. Sookman, Sookman: Computer, Internet and Electronic Commerce Law (loose-leaf), at § 3:90. As Cheryl Foong explains,

[c]ertain characteristics of the making available right can be outlined. As the provision of mere accessibility is sufficient to infringe the right, it is not necessary to prove that an actual transmission has occurred. In this way, article 8 of the WCT lowered the communication right’s threshold of protection and enlarged its scope. [p. 79]

[84] Similarly, as Ricketson and Ginsburg wrote, “[i]t is not necessary that the offer be accepted: ‘making available’ embraces incipient as well as effected communications” (p. 747).

[85] This persuasively establishes that art. 8 requires that member countries give authors the right to control when and how their work is made available for downloading or streaming. This conclusion is in full accordance with the wording of art. 8, which entitles authors to control the act of making a work available in a way that the public “may access” it. Actual transmission is not required. It is also supported by the explanatory notes accompanying art. 8 (then art. 10), which explain that the relevant act protected by art. 8 is the “initial act” of providing “access” to the work:

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 chosen 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. [Emphasis added.]

[86] This conclusion is also consistent with the WIPO Copyright Treaty’s purpose: to fill potential gaps in the Berne Convention created by the emergence of new Internet technologies. There would be significant gaps in protection if copyright owners had no recourse against individuals who illicitly make works available online for downloading or streaming.

The Court also confirmed that, under a compromise that became known as the “umbrella solution”, the WCT can be implementedby treaty countries in multiple ways, including through any combination of rights as long as all of the requirements of the WCT are met:

[90] In sum, the umbrella solution gave “relative freedom [to] national legislators in choosing the right of distribution, the right of communication to the public, the combination of these rights, or a new right, to fulfil obligations under Article 8”: M. Ficsor, The Law of Copyright and the Internet: The 1996 WIPO Treaties, their Interpretation and Implementation (2002), at p. 501. Accordingly, provided that the Copyright Act gives effect to art. 8’s goals through any combination of rights, Canada will be in compliance with its obligations under art. 8.

The Court went on to provide the correct interpretation of the amendments to the Act and to explain how Canada fully implemented its WCT obligations.

The Correct Interpretation of Section 2.4(1.1)

The Court held that, considering the text, structure, purpose, and context of s. 2.4(1.1), it is to be construed as clarifying that (1) the communication to the public right in s. 3(1)(f) applies to on-demand streams, and (2) a work is performed as soon as it is made available for on-demand streaming.

In the Court’s prior decision in Rogers, the Court held that s. 3(1)(f) applies to on-demand making available of streams to the public. The amendments to the Act, however, extended the scope of the communication right as interpreted in Rogers so that even providing access to a single on-demand stream to a member of the public could trigger the right:

[94] I also note that s. 2.4(1.1) provides slightly broader protection to authors than Rogers provides. Section 2.4(1.1)’s language makes clear that a single on-demand stream to a member of the public is a “communication to the public” under s. 3(1)(f). By contrast, the ratio in Rogers held that on-demand streams could be communications to the public if there was a “series of point-to-point communications of the same work to an aggregation of individuals”: para. 52 (emphasis added). Under s. 2.4(1.1) there is no need to prove a “series” of point-to-point communications. A single point-to-point on-demand communication to a member of the public will engage s. 3(1)(f).

As noted above, the s. 2.4(1.1) amendment clarified that a work is performed as soon as it is made available for on-demand streaming: “Textually, s. 2.4(1.1) says that a work is communicated when the work is made available in a way that ‘allows’ a member of the public to access a work from a place and time of their choosing. It does not say that the work needs to be accessed for it to be communicated.” The Court explained this was consistent with the interpretation of the communication right, which does not require that any viewer actually experience a work. It is enough if the viewer is given the opportunity to view the work:

[98] Finally, this interpretation is consistent with the purpose of the Copyright Act as it promotes technological neutrality. Historically, a work was performed as soon as the public was given the opportunity to experience the work for a limited period of time. For example, when a work is transmitted over cable television, the work is performed, regardless of how many customers tune in to the channel. “[T]here need not be an audience listening to the performance, as long as the performance is meant for an audience”: Harris, at p. 141. As Ricketson and Ginsburg explain,

[i]f only one person initiates the on-demand transmission at a time (or ever) is there a “communication to the public” within the meaning of the Berne Convention? The number of recipients should not in fact matter; what should count is the availability of the communication to “the public”. For example, there is a “communication to the public by wire” of a cinematographic work (article 14bis(1)) if a film is transmitted on cable television, even if no viewer in fact selects that channel to watch. What makes the communication “to the public” is the invitation to any member of the public to turn on the television and view the programme. Even when the cable transmission is restricted, for example, to paying subscribers, it still is “to the public” because any member of the public is invited to pay the fee. [Emphasis added; pp. 742-43.]

[99] Section 2.4(1.1) ensures that on-demand streams receive similar treatment. Section 2.4(1.1) makes it clear that a work is performed as soon as it is made available to the public for on-demand streaming because, at that point, users are given the opportunity to temporarily experience the work. Once a work is made available for on-demand streaming, all users have to do is tune in to the stream to experience the work. This is the digital equivalent of flipping to a 24/7 television channel that is continuously playing — that is performing — a particular work.

[100] This interpretation does not require treating the act of making the work available as a separate performance from the work’s subsequent transmission as a stream. The work is performed as soon as it is made available for on-demand streaming. At this point, a royalty is payable. If a user later experiences this performance by streaming the work, they are experiencing an already ongoing performance, not starting a new one. No separate royalty is payable at that point. The “act of ‘communication to the public’ in the form of ‘making available’ is completed by merely making a work available for on˗demand transmission. If then the work is actually transmitted in that way, it does not mean that two acts are carried out: ‘making available’ and ‘communication to the public’. The entire act thus carried out will be regarded as communication to the public”: Ficsor, at p. 508. In other words, the making available of a stream and a stream by a user are both protected as a single performance — a single communication to the public.

Protection for Downloads

The Court explained that Canada also satisfied its WCT obligation to protect the act of making available via the reproduction and authorization rights: “If a work is downloaded, the author’s reproduction right is engaged; if the work is made available for downloading, the author’s right to authorize reproductions is engaged.” Central to the Court’s holding in this regard is that any unauthorized act of making a work available for downloading violates the authorization right:

[104] “It is an infringement of copyright for any person to do, without the consent of the copyright owner, anything that by this Act only the owner of the copyright has the right to do”: s. 27(1). This includes the right to “authorize”a reproduction or performance: s. 3(1). To “authorize” means to sanction, approve and countenance: CCH, at para. 38, citing Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 S.C.R. 182, at p.193. Whether a reproduction or performance has been authorized is a question of fact and can be “inferred from acts that are less than direct and positive, including a sufficient degree of indifference”: CCH, at para. 38.

[105] Authorization is a distinct right granted to copyright owners. A user who unlawfully authorizes a reproduction or a performance of a work may be held liable for infringement of that right, regardless of whether the work is ultimately reproduced or performed: CCH Canadian Ltd. v. Law Society of Upper Canada, 2002 FCA 187, [2002] 4 F.C. 213, at paras. 112-13; Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427, at para. 120; B. Sookman, S. Mason and C. Craig, Copyright: Cases and Commentary on the Canadian and International Law (2nd ed. 2013), at p. 1001.

[106] If an individual makes a work available for downloading, that person implicitly authorizes the work’s reproduction: Apple Computer, Inc. v. Mackintosh Computers Ltd., [1988] 1 F.C. 673 (C.A.), at p. 697, aff’d [1990] 2 S.C.R. 209. As the Copyright Board recognized in SOCAN Statement of Royalties, Public Performance of Musical Works 1996, 1997, 1998 (Tariff 22, Internet) (Re) (1999), 1 C.P.R. (4th) 417,

“[a]uthorization” constitutes a separate protected use under the Act. To authorize is to sanction, approve and countenance. The person who makes a musical work available on an Internet-accessible site authorizes its communication. The work is posted for the sole purpose of being communicated and with full knowledge and intention that such a communication would occur. The person who makes the work available does more than merely provide the means to communicate the work; he/she either controls or purports to control the right to communicate it

Moreover, it is the act of posting that constitutes authorization. By doing so, a person invites anyone with Internet access to have the work communicated to them…

See also Warman v. Fournier, 2012 FC 803, 104 C.P.R. (4th) 21, at para. 13.

[107] While the above passage refers to communications, the Board’s comments are similarly applicable to reproductions. If a person makes a work available for downloading without authorization, that person infringes the copyright owner’s right to authorize reproductions. That is so regardless of whether the works are ultimately downloaded.

The Court also summed up its conclusion that the Act leaves no gap in providing the protections required by the WCT:

[108] Together, the performance, reproduction, and authorization rights in s. 3(1) of the Copyright Act give effect to Canada’s obligations under art. 8 and they do so in a technologically neutral manner. If a work is streamed or made available for on˗demand streaming, the author’s performance right is engaged. If a work is downloaded, the author’s reproduction right is engaged. If a work is made available for downloading, the author’s right to authorize reproductions is engaged. There are no gaps in protection.

Other Notable Holdings

Standard of review

One of the issues left unresolved by the Court’s seminal decision in Vavilov on judicial review of administrative decisions was whether Copyright Board decisions on questions of law should be reviewed on a correctness standard, as they had been in pre-Vavilov decisions, or a reasonableness standard. The Court held that the correctness standard continued to apply and that concurrent first-instance jurisdiction should be recognized as an additional correctness category analogous to those identified in Vavilov.

Role of treaties in interpreting the Copyright Act

Many of the exclusive and remunerative rights in the Act were enacted to implement copyright treaties and conventions to which Canada is a party. Therefore, the role that these international agreements play in interpreting the Act is very important for the copyright-based industries.

The Court reaffirmed the importance of considering treaties and conventions to which Canada is a party in construing the Act. The Court held that a treaty should be considered when interpreting statutes that purport to implement the treaty, in whole or in part. The treaty is relevant at the context stage of the statutory interpretation exercise without any need to find textual ambiguity in a statute before considering it. The modern approach to statutory interpretation requires interpreting the statute’s text in its “entire context”. The statute’s context includes any relevant international legal obligations. If a statute implements a treaty without qualification, the interpretation of the statute needs to be wholly consistent with Canada’s obligations under the treaty. If the statute is less explicit as to the extent to which it gives effect to a treaty, the weight given to obligations under the treaty will depend on the circumstances of the case, such as the treaty’s specificity and the statute’s text. Where the text permits, legislation should be interpreted so as to comply with Canada’s treaty obligations, in accordance with the presumption of conformity.

The presumption of conformity is, however, an aid to interpretation. The task remains to give effect to legislative intent. Accordingly, while a treaty can be highly relevant to statutory interpretation, it cannot overwhelm clear legislative intent. The court’s task is to interpret what the legislature (federally and provincially) has enacted and not subordinate this to what the federal executive has agreed to internationally. It is always the domestic statute that governs because international law cannot be used to support an interpretation that is not permitted by the words of the statute.

Some Concluding Thoughts

The WCT and its counterpart for sound recordings, the WPPT, were intended to provide copyright holders with important rights to control the release of their works online. The Court’s decision confirms that, in Canada, there are no gaps in protection, regardless of whether a work is made available online as a stream or a download. One way or another, any unauthorized act of making available will implicate either the communication to the public right (for streams and other performance-based acts) or the reproduction and authorization rights (for making available durable copies). The decision thus fully supports one of the Act’s objectives –to enable rights holders to control and license the release of their works online.

The Supreme Court agreed with many of the findings of the Copyright Board, which first considered the issues in the appeal, including the objectives of the WCT, that the WCT required member countries to fully protect the release and transmissions of materials online, whether streams or downloads, the WCT requirements could only be met by a right or combination of rights that left no gaps in protection, that the CMA amendments were intended by Parliament to fully implement Canada’s WCT obligations, and therefore had to be interpreted to be in harmony with this intention. The Federal Court of Appeal decision had cast doubt on all of these findings and left rights holders, users, and the courts with little or no guidance. See,Warner Bros. Entertainment Inc. v. White (Beast IPTV), 2021 FC 53. The Court of Appeal also cast doubt as to whether the standard of review on questions of law on appeals from the Copyright Board continued to be correctness.

The Supreme Court unanimously disagreed with the reasons for decision of the Court of Appeal and agreed in large part with the decision of the Copyright Board, except most importantly for its finding that all of Canada’s treaty obligations were met by a combination of the communication to the public, reproduction, and authorization rights, and not merely the communication right. The Court also confirmed that the standard of review on the scope of the Act continues to be correctness. In the result, the appeals from the decision of the Court of Appeal were dismissed. Substantively, however, the appeals were successful in clarifying the law and in vindicating the position of all parties to the appeals that Canada had intended to, and did in fact, amend the Act to provide all of the protections required by the WCT and that the standard of review on questions of law from the Copyright Board continues to be correctness.

The Court’s holding on the standard of review and the role of international treaties in construing domestic statuteswillalso be of importance in many future cases.