Bishop v. Stevens, [1990] 2 S.C.R. 467

Télé‑Métropole Inc. Appellant

v.

Michael Bishop Respondent

indexed as: bishop v. stevens

File No.: 20695.

1990: March 30; 1990: August 16.

Present: Lamer C.J.* and La Forest, L'Heureux‑Dubé, Gonthier and McLachlin JJ.

on appeal from the federal court of appeal

Copyright ‑‑ Infringement ‑‑ Prerecording of song for broadcast purposes ‑‑ Whether right to broadcast a musical work includes the incidental right to make an "ephemeral" recording beforehand ‑‑ Whether composer implicitly consented to ephemeral recordings in granting a licence to broadcast performances of his work ‑‑ Copyright Act, R.S.C. 1970, c. C‑30, ss. 2, 3(1), 17(1).

Respondent Bishop composed the music and lyrics to a song and sent a copy, with the appropriate forms, to a British association which acts to protect and enforce its members' copyrights. This association is affiliated with the Composers, Authors and Publishers Association of Canada (CAPAC). Stevens, a singer, subsequently recorded the song without entering into any agreement with Bishop and arranged with appellant Télé‑Métropole to appear on certain television shows in order to publicize it. Télé-Métropole broadcast two performances of the song using a prerecorded tape. It gave due notification and paid the appropriate fees for the broadcast performances to CAPAC, and the payments were eventually forwarded to Bishop.

Bishop alleged that Télé‑Métropole had infringed his copyright by recording the song without his permission, even though the recording was to be used only for the two broadcasts. The trial judge found that Télé-Métropole's prerecording infringed Bishop's copyright. The Federal Court of Appeal dismissed the appeal on this issue.

Held: The appeal should be dismissed.

The right to broadcast a performance under s. 3(1) of the Copyright Act does not include the right to make "ephemeral" recordings beforehand for the purpose of facilitating the broadcast. Copyright law is purely statutory law which simply creates rights and obligations as set out in the statute. The right to perform and the right to record a work are separately enumerated in s. 3(1). They are distinct rights in theory and in practice and are generally assigned separately, and administered by different entities. Section 3(1)(d) provides that copyright includes the sole right to make any record or other contrivance by means of which the work may be mechanically performed or delivered, and nothing in this section restricts its application to recordings made for the purpose of reproduction and sale. If a recording made for any purpose, even one not prejudicial to the copyright holder, is not authorized by the copyright holder then it is an infringement of his rights. A literal reading of s. 3(1)(d) does not prohibit the practice of prerecording: it simply requires a broadcaster to make the appropriate arrangements with the holder of the recording rights. An implied exemption to the literal meaning of s. 3(1)(d) is all the more unlikely in light of the detailed and explicit exemptions in s. 17(2) of the Act.

Ephemeral recordings are a very convenient device for broadcasters and their use is widespread, but they are also subject to abuse. In other countries, where the right to make ephemeral recordings as an adjunct of broadcast performances is recognized by statute, conditions are imposed on the broadcaster limiting the time for which an ephemeral recording may be kept and the use to which it may be put. Strict safeguards are necessary; these should be decided on by the legislature and not the courts.

Respondent did not implicitly consent to the ephemeral recordings in granting a licence to broadcast performances of his work. CAPAC powers are confined to performances and do not extend to contrivances for the reproduction of the performance. CAPAC can only grant licences which lie within its powers. Since the right to perform does not include the right to make ephemeral recordings, the CAPAC licence is confined to performance and cannot extend to the right to make ephemeral recordings.

Cases Cited

Referred to: Compo Co. v. Blue Crest Music Inc., 1979 CanLII 6 (SCC), [1980] 1 S.C.R. 357; Ash v. Hutchinson & Co. (Publishers), Ltd., [1936] 2 All E.R. 1496; Performing Right Society, Ltd. v. Hammond's Bradford Brewery Co., [1934] 1 Ch. 121; Watkins v. Olafson, 1989 CanLII 36 (SCC), [1989] 2 S.C.R. 750.

Statutes and Regulations Cited

Copyright Act, R.S.C. 1970, c. C‑30, ss. 2, 3, 13, 17, 19, 48, 49, 50.

Copyright Act, 1956 (U.K.), 4 & 5 Eliz. II, c. 74, s. 6(7).

Revised Berne Convention, Schedule II of the Copyright Act, R.S.C. 1970, c. C‑30, arts. 1, 11, 13, 14.

Rome Copyright Convention, 1928, Schedule III of the Copyright Act, R.S.C. 1970, c. C‑30, art. 11 (bis).

Rules of the Supreme Court of Canada, s. 29(2).

Television Broadcasting Regulations, C.R.C. 1978, c. 381, s. 5(5).

Authors Cited

Canada. Consumer and Corporate Affairs. From Gutenberg to Telidon: A White Paper on Copyright. Ottawa: Department of Communications, 1984.

Canada. Parliament. House of Commons. Sub‑Committee on the Revision of Copyright. Government Response to the Report of the Sub‑Committee on the Revision of Copyright. Ottawa: Government of Canada, 1986.

Canada. Parliament. House of Commons. Sub‑Committee on the Revision of Copyright. A Charter of Rights for Creators: Report of the Sub‑Committee on the Revision of Copyright. Ottawa: The Sub-Committee, 1985.

Canada. Royal Commission on Patents, Copyright, Trade Marks and Industrial Design. Report on Copyright (the Ilsley Report). Ottawa: Queen's Printer, 1957.

Fox, H. G. The Canadian Law of Copyright and Industrial Designs (2nd ed.). Toronto: Carswells, 1967.

Keyes, A. A. and C. Brunet. Copyright in Canada: Proposals for a Revision of the Law. Ottawa: Consumer and Corporate Affairs Canada, 1977.

Sanderson, P. Musicians and the Law in Canada. Toronto: Carswells, 1985.

APPEAL from a judgment of the Federal Court of Appeal (1987), 1987 CanLII 9868 (FCA), 80 N.R. 302, 18 C.P.R. (3d) 257, 16 C.I.P.R. 243, dismissing in part an appeal from a judgment of Strayer J., 1985 CanLII 5557 (FC), [1985] 1 F.C. 755, 4 C.P.R. (3d) 349, allowing respondent's action for copyright infringement. Appeal and cross-appeal dismissed.

Jacques A. Léger and Laurent Carrière, for the appellant.

Roger T. Hughes, Q.C., and John N. Allport, for the respondent.

//McLachlin J.//

The judgment of the Court was delivered by

MCLACHLIN J. -- The principal issue in this case is whether the right to broadcast a musical work in accordance with the Copyright Act, R.S.C. 1970, c. C-30 (now R.S.C., 1985, c. C-42), includes the incidental right to make an "ephemeral" recording beforehand for the sole purpose of facilitating the broadcast.

The appellant Télé-Métropole Inc. operates a television broadcasting business. The respondent Bishop is a musician, who composed the music and lyrics to a song entitled "Stay". He sent a copy, with the appropriate forms, to the Performing Rights Society (PRS) of Great Britain, which is an association for the protection and enforcement of music copyrights held by its members. That association is affiliated with a similar association in Canada, the Composers, Authors and Publishers Association of Canada (CAPAC), which administers rights held by PRS and its members within Canada. CAPAC is a "performing rights society" as contemplated by s. 48 (now s. 66) of the Copyright Act, and is entitled to collect fees for performing rights of its members and affiliates according to a scale published in the Canada Gazette. These fees are then passed on to the copyright holder.

Stevens, a singer, subsequently heard a performance of the song, and had inconclusive discussions with the respondent about the possibility of recording it. Without entering into any agreement with the respondent, Stevens recorded the song, in both English and French (under the title "Ne t'en vas pas" (sic)). To publicize the recording, Stevens arranged with the appellant to appear on television shows that feature popular music. Performances of the song were broadcast by the appellant on two occasions, in each case using a prerecorded tape. The appellant, though unaware that the song was written by the respondent and not by Stevens, gave due notification and paid the appropriate fees to CAPAC, and the payments for the broadcast performances were eventually forwarded through PRS to the respondent. No specific arrangements, however, were made regarding the prerecordings used in the broadcast.

Subsequent to the broadcasts, the respondent entered into an agreement with the Canadian Musical Reproduction Rights Agency Ltd. (CMRRA), an organization for the protection of reproduction rights in music held by its members. By the terms of the agreement, CMRRA had the non-exclusive right to administer the reproduction rights in the respondent's work, including the right to take legal action (with the respondent's consent) to collect monies due or to enforce his rights.

The respondent and CMRRA brought an action against several defendants including Stevens and the appellant. By the time of the trial, only the appellant remained as defendant. The complaint against the appellant was that it had infringed the respondent's copyright by recording the song without first obtaining his permission, though the recording was intended to be used only to effect the later broadcasts (which the parties agreed involved only performing rights that the appellant had properly paid for). The appellant claimed that the right to broadcast the performances included the incidental right to make an "ephemeral" recording for the sole purpose of facilitating the broadcasts.

Strayer J., at trial, found that the respondent had copyright in the song, and that the copyright had been infringed by the appellant's prerecording, though the infringement was minimal. He awarded damages in the amount of $150, and further ordered that the prerecordings of the performances used for the broadcast be destroyed. He held also that CMRRA was a proper party to the action in so far as it sought relief against future infringements, though it could not sue in respect of an infringement of the respondent's rights that occurred before the respondent entered into an agreement with CMRRA. An appeal to the Federal Court of Appeal was allowed in part, on the issue of whether CMRRA was a proper party, but the Court, per Pratte J., agreed that the prerecordings constituted an infringement of the respondent's copyright. Leave to appeal on the issue of the prerecordings was granted by this Court.

CMRRA purported to cross-appeal the holding that it was not a proper party to the action. The appellant applied to quash the cross- appeal, on the grounds that no leave had been sought, that the time limits for appealing had been exceeded, and that the issue was not one of national importance. This Court granted the motion. The respondent subsequently purported to cross-appeal on the same issue, also without seeking leave. At the hearing of the case we indicated that we did not wish to hear argument on this point.

Statutory Provisions

Copyright Act

2. . . .

"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.

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;

(f) in case of any literary, dramatic, musical or artistic work, to communicate such work by radio communication;

and to authorize any such acts as aforesaid.

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.

Analysis

The issue in this case arises because the introduction of new technology presented a situation not contemplated by the drafters of the original Canadian Copyright Act in the 1920's.

The Act was based on, and designed to implement, the Berne Convention of 1886 as revised in Berlin in 1908, which set forth an international code and created a union of states "for the protection of the rights of authors over their literary and artistic works": Revised Berne Convention, Schedule II of the Copyright Act, Article 1. Canada is a party to that convention.

The Revised Berne Convention sets out a number of specific rights of authors (comprising also composers and artists), including Articles 11, 13 and 14:

Article 11

The stipulations of the present Convention shall apply to the public representation of dramatic or dramatico-musical works, and to the public performance of musical works, whether such works be published or not.

Article 13

The authors of musical works shall have the exclusive right of authorizing (1) the adaptation of those works to instruments which can reproduce them mechanically; (2) the public performance of the said works by means of these instruments.

Article 14

Authors of literary, scientific or artistic works shall have the exclusive right of authorizing the reproduction and public representation of their works by cinematography.

The above provisions apply to reproduction or production effected by any other process analogous to cinematography.

These specific rights find their reflection in the introductory paragraph to s. 3(1) and in s. 3(1)(d) of the Copyright Act. The first of these refers to the right to perform (Article 11), and the second to the right to make any record, perforated roll, cinematograph film or other contrivance by means of which the work may be mechanically performed or delivered (Articles 13 and 14).

With the advent of radio broadcasting, the Convention was further modified in 1928 by, inter alia, the addition of Article 11 (bis):

Article 11 (bis)

(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing the communication of their works to the public by radiocommunication.

Canada is also a party to this round of revisions, known as the Rome Copyright Convention, 1928. Section 3(1)(f), referring explicitly to the sole right of the copyright holder to communicate the work by radio communication, was added to the Copyright Act in 1931 to implement the Rome agreement.

Technological progress, of course, did not stop there. As broadcasting became more advanced, the practice developed of recording a performance for broadcast later, in order to ensure greater quality and flexibility for broadcasters. A further round of revisions to the convention was undertaken in Brussels, in 1948, and as part of these revisions a paragraph (3) was added to Article 11 (bis):

(3) Except where otherwise provided, permission granted in accordance with paragraph (1) of this Article shall not imply permission to record the radio-diffused work by means of instruments recording sounds or images. It shall, however, be a matter for legislation in the countries of the Union to determine the regulations for ephemeral recordings made by a broadcasting body by means of its own facilities and used for its own emissions. The preservation of these recordings in official archives may, on the ground of their exceptional documentary character, be authorised by such legislation.

Canada, however, did not adhere to the Brussels Convention, and unlike many other countries has not specifically provided in its legislation that these "ephemeral" recordings are incidental to the right to broadcast. This leaves open the question posed in this case -- whether the right to make a prerecording of a radio broadcast is included within the right to broadcast, or whether the making of the prerecording is the making of a "record, perforated roll, cinematograph film, or other contrivance" within the scope of s. 3(1)(d), for which separate permission must be obtained from the copyright holder.

The appellant presents two main arguments in favour of its contention that the right to make ephemeral recordings is included within the right to broadcast. First, the appellant submits that the Act must be interpreted in light of technological progress and the practical exigencies of broadcasting. When understood in this light, an ephemeral recording falls within the definition of broadcast performance, rather than being a true recording, because it is part of the process by which such performances are usually effected. An ephemeral recording may be distinguished from a true recording by the purpose for which it is made. A record within the meaning of s. 3(1)(d), according to the appellant, is one made for the purpose of being reproduced, thereby reaching a wider audience than the original performance. An ephemeral recording, on the other hand, is but a means to facilitate reaching exactly the same audience as a live broadcast performance would. It is not intended to be reproduced, and is often technically unsuitable for high quality reproduction.

Appellant's second main contention is that in granting a licence through PRS and CAPAC to broadcast performances of his work, respondent impliedly consented to the making of the ephemeral recordings. Under s. 17 (now s. 27) of the Act, there is no copyright infringement if a person does something which only the copyright holder has the right to do, provided that the copyright holder consents. This argument too depends on the appellant's contention that prerecording is standard practice in the broadcast industry. Appellant also places some reliance on the fact that in Britain, a licence from PRS to broadcast a performance would by statute (Copyright Act, 1956, s. 6(7)) include the right to make ephemeral recordings. Therefore, respondent's ceding of performance rights to PRS must be understood as including consent to the appellant's act of making the ephemeral recordings.

The respondent relies on a more literal reading of ss. 2 and 3 of the Act. Although s. 2's definition of "performance" includes a representation made by radio communication, nothing in that definition limits s. 3(1)(d), which provides that the copyright holder has the sole right to make any record, perforated roll, cinematograph film, or other contrivance by means of which the work may be mechanically performed or delivered. Section 3(1)(d) does not on its terms distinguish between a recording made to facilitate a broadcast and one made for any other purpose. Playing the recording for broadcast comes within the definition of performance, but making the recording does not. In the respondent's view, the ability to prerecord for greater convenience and flexibility when broadcasting is a benefit for which the broadcaster should be expected to pay.

On the issue of consent, respondent claims that no consent to prerecord is given by the CAPAC licence. The respondent challenges the contention that prerecording of works in which copyright is held by others is standard practice, maintaining that this was not proved by expert witnesses. Furthermore, CAPAC would be unable to grant a licence to record, because under the scheme of the Act CAPAC deals only with performing rights. Although respondent's arrangement with PRS might mean he would have ceded the right to make ephemeral recordings in Britain, the question of what rights were given to the appellant by the CAPAC licence must be governed by the Canadian legislation, which makes no allowance for such recordings.

Issue I: Does the Right to Broadcast a Performance Include the Right to Make Ephemeral Recordings?

Analysis of these arguments must begin by emphasizing that copyright law is purely statutory law, which "simply creates rights and obligations upon the terms and in the circumstances set out in the statute": Compo Co. v. Blue Crest Music Inc., 1979 CanLII 6 (SCC), [1980] 1 S.C.R. 357, at p. 373, per Estey J. First and foremost, then, this case is a matter of statutory interpretation. It is clear from an examination of s. 3(1) that it lists a number of distinct rights belonging to the copyright holder. As stated in Ash v. Hutchinson & Co. (Publishers), Ltd., [1936] 2 All E.R. 1496 (C.A.), at p. 1507, per Greene L.J.:

Under the Copyright Act, 1911 [on which the Canadian Act was based], s. 1(2), the rights of the owner of copyright are set out. A number of acts are specified, the sole right to do which is conferred on the owner of the copyright. The right to do each of these acts is, in my judgment, a separate statutory right, and anyone who without the consent of the owner of the copyright does any of these acts commits a tort; if he does two of them, he commits two torts, and so on.

See also Compo Co. v. Blue Crest Music Inc., supra, at p. 373.

The right to perform (including radio broadcast), and the right to make a recording, are separately enumerated in s. 3(1). They are distinct rights in theory and in practice, as is evident from a description of the licensing system by which musicians obtain payment for use of their works:

Two main assignments occur. Both are a significant step towards earning income from transferring copyright. One is the assignment of the performing right to a performing rights society. The terms of the assignment are technically negotiable. However, both PROCAN and CAPAC, which are discussed below, have standard forms for assigning performing rights which are seldom amended. The second assignment is of the remainder of the copyright, that is, all copyright except the performing right, which was previously assigned to the performing rights society, to a music publisher. Upon assignment, the publisher becomes the owner of the copyright, and usually through its agent reproduction rights agency, licenses specific copyright uses thereby generating income. This is a skeletal outline of the voluntary aspect of the transfer system in relation to the music business.

Reproduction rights agencies are generally agents for music publishers as owners of musical copyrights. They license reproduction rights, which are essentially all of the musical copyrights other than the performing right.

(P. Sanderson, Musicians and the Law in Canada (1985), at pp. 22 and 24.)

Thus the rights to perform and to record a work are considered sufficiently distinct that they are generally assigned separately, and administered by different entities.

The distinction is also mirrored in the Act, beyond the separate enumeration of the two rights in s. 3(1). Both the right to perform and the right to record are subject to a system of compulsory licensing, but under markedly different terms. Under s. 13 (now s. 15) of the Act, if a work has been performed in public during the composer's lifetime, then anytime after the composer's death on application the Governor in Council may order that the copyright owner grant a licence to perform the work in public. By contrast, once a work has been recorded any other person may make a recording of the work, as long as a royalty of two cents per side per copy is paid to the copyright holder (s. 19 (now s. 29)).

This distinction between the right to perform and the right to record a work is unsurprising in light of the object and purpose of the Act. As noted by Maugham J., in Performing Right Society, Ltd. v. Hammond's Bradford Brewery Co., [1934] 1 Ch. 121, at p. 127, "the Copyright Act, 1911, was passed with a single object, namely, the benefit of authors of all kinds, whether the works were literary, dramatic or musical". See also Article 1 of the Revised Berne Convention, cited above. A performance is by its very nature fleeting, transient, impermanent. When it is over, only the memory remains. A composer who authorizes performance of his work for a period of time has not irrevocably given up control over how the work is presented to the public. He may choose at a future time to withdraw his authorization, and be the sole interpreter of his own work, or he may place conditions on his authorization. He may control the frequency of performance, and choose the audiences which are to hear his work. Other performers might copy his performances without authorization, but the public nature of performance is such that this will likely come to his attention. Furthermore, no imitation of a performance can be a precise copy. A recording, on the other hand, is permanent. It may be copied easily, privately, and precisely. Once a work has been recorded, the recording takes on a life of its own. This is why, from a composer's point of view, the right to control the circumstances under which the first recording is made is crucial. Once the composer has made or authorized a recording of his work, he has irrevocably given up much of his control over its presentation to the public. These are the reasons why the rights to perform and to record are recognized as distinct in the Act, and why in practice a composer may wish to authorize performances but not recordings of his work.

The parties in this case do not disagree on the basic distinction that the Act makes between the right to record and the right to perform. The appellant, however, argues that it is not at issue in this case, because an ephemeral recording has nothing to do with s. 3(1)(d). It is not made for the purpose of being reproduced or sold, but rather for technical reasons. But as the respondent points out, s. 3(1)(d) contains no mention of purpose. It simply provides that copyright 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;

Interpretation of a statute must always begin with the ordinary meaning of the words used, and nothing in this section restricts its application to recordings made for the purpose of reproduction and sale. A recording may be made for any purpose, even one not prejudicial to the copyright holder, but if it is not authorized by the copyright holder then it is an infringement of his rights. For example, it would seem to me that an agent who made an unauthorized recording of a songwriter's work for the purpose of getting record companies interested would not have infringed the Act any less because his action ultimately benefited the songwriter.

The appellant argues that ephemeral recordings fall outside the scope of s. 3(1)(d) because they are necessarily included within the separate right to broadcast a performance. Appellant submitted that in modern practice, all but 10 per cent of television programming is prerecorded, and that prerecording is virtually essential to ensure the quality of broadcasts, and to enable broadcasters to offer the same programming at convenient times across five different time zones.

I do not doubt that the facts on which this contention is based are true, and I cannot say that I am unsympathetic to the appellant's situation. However, the appellant has not established that, at the time of their enactment, the sections of the Act providing for the right to broadcast a performance must have been understood to include the right to prerecord. Even now it remains fully possible, and quite common, to broadcast live performances. And a literal reading of s. 3(1)(d) does not by any means prohibit the practice of prerecording. It simply requires a broadcaster wishing to prerecord to make the appropriate arrangements with the holder of the recording rights.

Furthermore, an implied exemption to the literal meaning of s. 3(1)(d) is all the more unlikely, in my opinion, in light of the detailed and explicit exemptions in s. 17(2) (now s. 27(2)) of the Act, providing for matters as diverse as private study, research or critical review, educational use, disclosure of information pursuant to various federal Acts, and performance of a musical work without motive of gain at an agricultural fair.

Appellant points out further that it is required by a regulation promulgated by the Canadian Radio and Telecommunication Commission (Television Broadcasting Regulations, C.R.C. 1978, c. 381, s. 5(5)) to make archival recordings of all programmes, and keep them for at least four weeks from date of broadcast. In light of this requirement, it is submitted, at least one exception to s. 3(1)(d) must be implied.

I cannot see how this aids the appellant. The CRTC archival recordings are not strictly at issue in this case, and are raised only by analogy. They do appear to conflict with the right given to the copyright holder by s. 3(1)(d), it is true. But that simply means that if a copyright holder were ever to claim that his rights were being infringed by the unauthorized recording of his works for archival purposes, the courts would have to decide whether the two enactments are reconcilable, or whether one or the other should take precedence. In this case, however, no legislation compelled the appellant to make the prerecordings.

Even though the purpose for which the recordings are made is not one that is prejudicial to the copyright holder, that is not to say that the copyright holder has no interest in whether or not they are made. As pointed out above, the existence of a studio recording increases the possibility of unauthorized copying, and of the copyright holder losing some degree of control over the work. While the risk of this occurring may be small when the recording is made by a legitimate broadcaster such as the appellant, the copyright holder would no doubt want the security of knowing that adequate safeguards are being taken against this possibility. In other countries, where the right to make ephemeral recordings as an adjunct of broadcast performances is recognized by statute, conditions are imposed on the broadcaster limiting the time for which an ephemeral recording may be kept, and the use to which it may be put. The Government White Paper on copyright legislation reform (From Gutenberg to Telidon (1984), at pp. 44-45), in recommending that the Act be amended to contain a specific exemption for ephemeral recordings, emphasized the need for such limits:

As the exemption is intended to allow for ephemeral or temporary recordings there is a need for a restricted period for which it will last.

Public comment is invited on the length of time that broadcasting organizations should be allowed to retain copies of an ephemeral recording. [The Brussels Convention is cited.] National practice varies greatly: for example, 15 days (Italy), 28 days (the United Kingdom and the Netherlands), 3 months (Luxembourg), 6 months (Morocco and the United States) and 1 year (Sweden, Finland and Australia). Some countries, such as Sweden and Finland, place limits on the number of times that the ephemeral recording can be used during the prescribed time period, while others allow any number of otherwise noninfringing uses. There will be no such limit in the Canadian Act.

It should be noted that the right to make an ephemeral recording does not in itself create a right to broadcast the work recorded. Most works protected by copyright (with the exception of sound recordings) contain a broadcast right; therefore it would be necessary to obtain the authorization of the copyright owner to rebroadcast the work regardless of how long the ephemeral recording may be kept. Broadcasters argue that this provides an adequate safeguard against abuse.

Doubtless copyright owners are concerned that, notwithstanding the provisions of the Act, ephemeral recordings made for broadcast purposes may find their way into other uses if they are kept for too long.

Without such limits, the proper balance between the technical needs of broadcasters and the security of copyright holders is unlikely to be struck.

Appellant argues that the fact that there are special exemptions in other countries for ephemeral recordings is not relevant to the interpretation of the Canadian Act, because those countries, unlike Canada, adhere to the Brussels Convention and are thereby bound to pass an explicit legislative exemption to authorize the practice. However, it does not follow from the fact that Canada is not bound to pass specific legislation with respect to ephemeral recordings that its failure to do so implies that the right to make ephemeral recordings is implicit in the existing legislation. On the contrary, the breadth of s. 3(1)(d) would seem to make a specific exemption equally necessary. Furthermore, whether one is considering Canada or the other countries, an explicit provision is necessary for practical reasons, in order to strike the appropriate balance between the technical needs of the broadcasters and the need for security of the copyright holders.

It cannot be denied that ephemeral recordings are a highly useful device for broadcasters, and their use appears to be widespread not only within Canada but in many other countries. But they are also a device which is subject to abuse -- abuse that the copyright holder whose interests the Act is designed to protect has little means of detecting or controlling. Task forces and legislators who have considered the matter have concluded that strict safeguards are necessary if ephemeral recording rights are to be recognized as an incident of broadcasting rights. Yet the appellant asks us to read into as implicit in the existing legislation a right which is unlimited, and provides no protection to the copyright owner other than the broadcasters' good faith.

It may be argued that an unlimited implicit right to make ephemeral recordings is not necessary, and that the courts could also imply limits to the right. However, the policy issues associated with such a rule would be beyond the proper purview of the courts. On the basis of what legal principle could a court decide on an appropriate length of time for which an ephemeral recording may be kept, or an appropriate number of times it may be played? These are matters which fall squarely within the legislative purview. As stated in Watkins v. Olafson, 1989 CanLII 36 (SCC), [1989] 2 S.C.R. 750, at p. 760:

There are sound reasons supporting . . . judicial reluctance to dramatically recast established rules of law. The court may not be in the best position to assess the deficiencies of the existing law, much less problems which may be associated with the changes it might make. The court has before it a single case; major changes in the law should be predicated on a wider view of how the rule will operate in the broad generality of cases. Moreover, the court may not be in a position to appreciate fully the economic and policy issues underlying the choice it is asked to make. Major changes to the law often involve devising subsidiary rules and procedures relevant to their implementation, a task which is better accomplished through consultation . . . than by judicial decree.

The issue of ephemeral recording rights (together with rights to make archival recordings) is one that has long been on the legislative agenda, as is evident from the above White Paper excerpt. See also Royal Commission on Patents, Copyright, Trade Marks and Industrial Design, Report on Copyright (the Ilsley Report) (1957), at p. 57; A. A. Keyes and C. Brunet, Copyright in Canada: Proposals for a Revision of the Law (1977), at pp. 167-68; A Charter of Rights for Creators: Report of the Sub-Committee on the Revision of Copyright (1985), at pp. 60-62; Government Response to the Report of the Sub-Committee on the Revision of Copyright (1986), at pp. 11-12. Given the policy issues raised and the repeated consideration of the matter by Parliament and its legislative adjuncts, it is my view that it would be inappropriate for this Court to interfere.

In sum, I am not convinced that there is any reason to depart from the literal readings of s. 3(1)(d) and the introductory paragraph to s. 3(1) of the Act, which on their face draw a distinction between the right to make a recording and the right to perform. Neither the wording of the Act, nor the object and purpose of the Act, nor practical necessity support an interpretation of these sections which would place ephemeral recordings within the introductory paragraph to s. 3(1) rather than s. 3(1)(d). On the contrary, policy considerations suggest that if such a change is to be made to the Act it should be made by the legislature, and not by a forced interpretation. I conclude that the right to broadcast a performance under s. 3(1) of the Act does not include the right to make ephemeral recordings for the purpose of facilitating the broadcast.

Issue II: Did the Respondent Consent to the Ephemeral Recordings?

The appellant argues that there was no infringement of the respondent's copyright because the appellant made the ephemeral recordings with the consent of the copyright holder.

It is common ground that there was no express consent given by either CAPAC or the respondent to the appellant to make the recordings. However, the appellant submits that consent can be implied from the circumstances. As stated by H. G. Fox, in The Canadian Law of Copyright and Industrial Designs (2nd ed. 1967), at p. 339:

In order to constitute an infringement the act complained of must be done "without the consent of the owner of the copyright". Such a consent may be presumed from the circumstances. The inference of consent must be clear before it will operate as a defence and must come from the person holding the particular right alleged to be infringed. [Emphasis added.]

Since the appellant never dealt directly with the respondent, consent to make the recordings must have come, if at all, from CAPAC. Furthermore, in light of the above analysis the appellant must show that CAPAC was capable of authorizing the appellant to make recordings.

The appellant places some emphasis on the fact that its licence from CAPAC authorized multiple performances within the licence period:

To meet the convenience of operators of television stations other than the Canadian Broadcasting Corporation for a general licence covering the television broadcasting for private and domestic use only at any time and as often as desired during the licence period of any and all the works for which the Association has from time to time power to grant a performing licence, licences are issued for each calendar month. [Emphasis added.]

I cannot conclude that this licence impliedly confers consent to make ephemeral recordings. On one reading, the licence may be seen as adverting to multiple live performances. On another, it could be taken as referring to performances using a recording for which authorization has been separately obtained. In short, the licence falls far short of providing a "clear inference" of consent to make ephemeral prerecordings of a broadcast.

More fundamentally, CAPAC can grant only such licences as lie within its powers. These powers, it will be seen, are confined to performances and do not extend to contrivances for the reproduction of the performance. The licence refers to "any and all the works for which the Association has from time to time power to grant a performing licence". Similarly, the provisions of the Act that give CAPAC its status refer exclusively throughout to the grant of performance licences:

48. (1) Each society, association or company that carries on in Canada the business of acquiring copyrights of dramatico-musical or musical works or of performing rights therein, and deals with or in the issue or grant of licences for the performance in Canada of dramatico-musical or musical works in which copyright subsists, shall, from time to time, file with the Minister at the Copyright Office lists of all dramatico-musical and musical works, in current use in respect of which the society, association or company has authority to issue or grant performing licences or to collect fees, charges or royalties for or in respect of the performance of its works in Canada.

(2) Each such society, association or company shall, on or before the 1st day of November in each and every year, file, with the Minister at the Copyright Office statements of all fees, charges or royalties which such society, association or company proposes during the next ensuing calendar year to collect in compensation for the issue or grant of licences for or in respect of the performance of its works in Canada.

It is according to this tariff, published in the Canada Gazette and subject to the supervision of the Copyright Appeal Board (ss. 49-50 (now ss. 67-70)), that the appellant purports to have acquired its licence. If the right to perform does not include the right to make ephemeral recordings, as I earlier concluded, it follows that the CAPAC licence is confined to performance and cannot extend to the right to make ephemeral recordings.

Nor does the fact that CAPAC acquired the performing rights from the respondent indirectly, through PRS, have any significance in this case. The appellant claims that the respondent, by his arrangement with PRS, ceded the right to make ephemeral recordings, because PRS, an English company, is subject to the U.K. Copyright Act, 1956, s. 6(7), which allows ephemeral recording in connection with broadcast performances. This submission, too, must fail. The U.K. provision does nothing to alter the rights granted to PRS by its members, or by PRS to broadcasters, but merely deems the practice of making ephemeral recordings not to be an infringement within the U.K., provided certain conditions are met. It can have no application to the case at bar, which is governed by the Canadian Copyright Act. Even if it did, the evidence is that the appellant did not comply with the conditions of the subsection, which requires that the ephemeral recordings be destroyed within 28 days. (The trial judge found that the tapes had not been destroyed by the time of the trial.) In my view, no consent for the making of ephemeral recordings can be implied from the respondent's arrangement with PRS.

The Cross-Appeal

The respondent purports to cross-appeal the holding that CMRRA was not a proper party to this action. No leave was sought. According to Rule 29(2) of the Rules of the Supreme Court of Canada, "[i]f a respondent intends to appeal a part of any judgment not made subject of the appeal by the appellant, the respondent shall obtain leave to make such cross-appeal". Quite apart from the respondent's failure to obtain leave on this issue, I can see no legal interest of the respondent in whether or not CMRRA was a valid party. I therefore conclude that the respondent's cross-appeal is without foundation.

Conclusion

I would dismiss the appeal with costs, and dismiss the cross-appeal with costs.

Appeal and cross-appeal dismissed with costs.

Solicitors for the appellant: Léger, Robic & Richard, Montréal.

Solicitors for the respondent: Sim, Hughes, Dimock, Toronto.

• Chief Justice at the time of judgment.