The Context of the Supreme Court’s Copyright Cases

The Context of the Supreme Court’s Copyright Cases

In the summer of 2012, the Supreme Court of Canada created history by simultaneously releasing five copyright judgments: Entertainment Software Association v Society of Composers, Authors and Music Publishers of Canada [ESA],[1] Rogers Communications Inc. v Society of Composers, Authors and Music Publishers of Canada [Rogers],[2] Society of Composers, Authors and Music Publishers of Canada v Bell Canada [Bell],[3] Alberta (Education) v Canadian Copyright Licensing Agency [Alberta (Education)],[4] and Re:Sound v Motion Picture Theatre Associations of Canada [Re:Sound].[5]

This historic event reverberated in a number of domains.

These five judgments mark the final moments before a long anticipated major reform in Canada’s copyright law: on 12 July 2012, when the five judgments were released, the Copyright Modernization Act had been passed by Parliament but had not been declared in force.[6]

In addition to marking the end of one version of the Copyright Act, in the context of intellectual property development in Canada, the “pentalogy” instantly enormously multiplied the total jurisprudence from Canada’s highest court that bears on copyright. Indeed, between the time McLachlin J became Chief Justice of the Supreme Court in 2000 and the release of the pentalogy, there had only been five copyright judgments from the Court:[7] Théberge v Galérie d’Art du Petit Champlain [Théberge],[8] CCH Canadian Ltd v Law Society of Upper Canada [CCH],[9] Society of Composers, Authors, and Music Publishers of Canada v Canadian Association of Internet Providers [SOCAN v CAIP],[10] Robertson v Thomson Corp [Robertson],[11] and Euro-Excellence Inc. v Kraft Canada Inc. [Toblerone].[12] Taken together, these ten cases represent a greater volume of interest from the Supreme Court in copyright than has been evinced at any time since it became Canada’s final appeal court.[13] For example, in Ian Bushnell’s history of the Federal Court, spanning 1875 to 1992, there is mention of only one intellectual property case being appealed to the Supreme Court,[14] a trademark case, Benson & Hedges v St. Regis Tobacco Corporation.[15] Others did reach the Supreme Court but did not merit discussion in Bushnell’s history: for example, in copyright, on appeal from the Exchequer Court (predecessor to the Federal Court), the Supreme Court decided Cuisenaire v South West Imports Ltd in 1969—but consideration of copyright by the Supreme Court under previous Chief Justices has definitely been infrequent.[16] One reason for this relative paucity of copyright cases in the Supreme Court may be the strong contribution to intellectual property jurisprudence between 1964 and 1980, which is universally acknowledged as being made by Jackett CJ of the Federal Court.[17]

But, beyond the context of copyright jurisprudence, the release of these five copyright decisions together was a landmark in the history of Supreme Court jurisprudence in general. This chapter will focus on the historic copyright “pentalogy” but, rather than considering these judgments primarily in light of Canadian copyright jurisprudence— or, indeed, in light of intellectual property jurisprudence more broadly—the discussion will focus on these five judgments in the context of Canada’s Supreme Court jurisprudence generally...

Featured here is the first part of a book chapter written by Dr. Margaret Ann Wilkinson, Faculty Scholar and Director of the Area of Concentration in Intellectual Property, Information and Technology Law at Western University. The full chapter is available for download here. The book is entitled "The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law" edited by Michael Geist, and is available for purchase or download here.

[4] 2012 SCC 37, [2012] 2 SCR 345 <> [Alberta (Education)].

[6] Passed 29 June 2012, much of the Copyright Modernization Act, SC 2012,  c 20 <>, amending the Copyright Act, RSC 1985, c C-42 <>, has been brought into force on 7 November 2012. Those sections of the revised Copyright Act which are not yet in force (but pending implementation under the Copyright Modernization Act when declared in force) are, new or revised, s 2(1) (the definitions of “moral rights” and “treaty country” replaced), s 5 (1.01) to (1.03) replaced, s 15 (2.2) added, s 15(4) added, s 18(2) replaced, s 18(2.2) added, s 18(4) added, s 19(1.2) added, s 19.2 added, s 20(1.2) added, s 20 (2.1) added, s 22(1) replaced, ss 41.25, 41.26 and 41.27(3) added and, finally, s 58(1) replaced <>.

[7] In 2002, the Supreme Court refused leave to appeal from Delrina Corp. (c.o.b. Carolian Systems) v Triolet Systems Inc. [2002] OJ No 676 (CA); see [2002] 178 OAC 200, 2002 CarswellOnt 4080 <>.

[10] 2004 SCC 45, [2004] 2 SCR 427 <> [SOCAN v. CAIP].

[13] The Judicial Committee of the Privy Council had oversight of Canada’s Supreme Court in criminal cases until 1933 and in civil cases until 1949. Ian Bushnell, in introducing his The Captive Court: A Study of the Supreme Court of Canada (Montreal: McGill-Queen’s University Press, 1992), makes the observation that the Supreme Court was not an important part of Canadian society until after 1949 when appeal to the Privy Council of the House of Lords in England was abolished (see xi).

[14] Ian Bushnell, The Federal Court of Canada: A History, 1875–1992 (Toronto: The Osgoode Society for Canadian Legal History, 1997) at 190.

[15] Benson & Hedges (Canada) Ltd. v St. Regis Tobacco Corpn. [1969] SCR 192 <>.

[16] See Cuisenaire v South West Imports Ltd., [1969] SCR 208 <>. In 1998, leave was refused from both Gould Estate v Stoddart Publishing Co. (1998), 39 OR (3d) 545 (CA) <>; and Tele-Direct (Publications) Inc v American Business Information, Inc., [1998] 2 FC 22 (CA) <>.

[17] WR Jackett became President of the Exchequer Court, predecessor to the Federal Court, in 1964 and was made Chief Justice of the Federal Court when it was created in 1971. He retired in October of 1979. See Richard W Pound, Chief Justice Jackett: By the Law of the Land (Montreal: McGill-Queen’s University Press, 1999) at 185- 192 and 270-276. There was tension between the Federal Court and the Supreme Court in those years, and especially between Jackett CJ of the Federal Court and Laskin CJ of the Supreme Court (1973–1984), especially over the jurisdiction of the Federal Court. However, this tension played out in fields other than intellectual property. See both Pound’s monograph, cited here, and Bushnell’s The Federal Court of Canada, supra note 15 at 220-23.