SUPERIOR COURT OF JUSTICE - ONTARIO

COURT FILE NO.: CV-10-00413950

MOTION HEARD: 20130816

RE: Spanski Enterprises, Inc. and Telewizja Polska Canada, Inc., Plaintiffs/Responding Parties

AND:

IMB+ Records Inc., International Media Broadcasting Corporation and Peer 1 Network Enterprises, Inc., Defendants/Moving Parties

BEFORE: Master McAfee

COUNSEL:
Peter Mantas, Counsel for the Defendants/Moving Parties, IMB+ Records Inc. and International Media Broadcasting Corporation

Peter J. Henein and Casey M. Chisick, Counsel for the Plaintiffs/Responding Parties

HEARD: August 16, 2013

REASONS FOR DECISION

[1] This is a motion brought by the defendants, IMB+ Records Inc. and International Media Broadcasting Corporation (collectively IMB). IMB seeks an order pursuant to section 106 of the Courts of Justice Act, R.S.O. 1990, c.C.43, staying the portion of this action brought pursuant to the Copyright Act, R.S.C., 1985, c.C-42 until such time as the owners of the copyright in issue, Telewizja Polska S.A. (TVP) and Telewizja POLSAT S.A. (POLSAT) are either added as parties to this action or deliver their consent to be bound by any decision of the court in this action and provide authorization for the plaintiffs to be their representatives in this action.

[2] The plaintiffs, Spanski Enterprises, Inc. (SEI) and Telewizja Polska Canada, Inc. (TPC) oppose the motion.

[3] For the reasons that follow, the motion is dismissed.

[4] Pursuant to the provisions of the Copyright Act the owner of the copyright shall be a party to these proceedings subject to certain exceptions. The relevant section of the Copyright Act is as follows:

41.23(1) Subject to this section, the owner of any copyright, or any person or persons deriving any right, title or interest by assignment or grant in writing from the owner, may individually for himself or herself, as a party to the proceedings in his or her own name, protect and enforce any right that he or she holds, and, to the extent of that right, title and interest, is entitled to the remedies provided by this Act.

(2) If proceedings under subsection (1) are taken by a person other than the copyright owner, the copyright owner shall be made a party to those proceedings, except

(a) in the case of proceedings taken under section 44.1, 44.2 or 44.4;

(b) in the case of interlocutory proceedings, unless the court is of the opinion that the interests of justice require the copyright owner to be a party; and

(c) in any other case in which the court is of the opinion that the interests of justice do not require the copyright owner to be a party.

[5] The parties agree that the issue on this motion is whether, in accordance with section 41.23(2)(c) of the Copyright Act, the interests of justice do not require the copyright owner to be a party.

[6] The onus is on the plaintiffs to show that it is in the interests of justice that the copyright owners are not added as parties (Entral Group International Inc. v. 1438762 Ontario Inc., [2005] O.J. No. 2140 (Master) at para 17).

[7] I am satisfied that the interests of justice do not require the copyright owners to be parties.

[8] SEI and TPC have the authority, and in the case of POLSAT the contractual obligation, to represent the legal rights of both TVP and POLSAT in accordance with the terms of the respective agreements.

[9] The TVP Agreement as amended provides:

TVP designates SEI as its representative in the Territory [North America and South America], authorized to prevent any violations and to protect TVP rights. Any legal action on behalf of TVP, in particular incurring costs, may be undertaken only by prior approval by TVP. TVP will provide appropriate support to SEI actions in this regard.

[10] TVP provided its prior approval (Spanski affidavit, para 54 and exhibit “R”).

[11] The POLSAT Agreement provides:

[TPC] undertakes to ensure legal protection to the POLSAT2 program on the Territory [Canada] by way of undertaking and performing, at its expense, appropriate actions (including legal action) against person infringing on copyright and related rights of POLSAT, particularly against entities illegally retransmitting the POLSAT program via the Internet and/or cable or telecommunications networks.

[12] Having regard to the above-noted provisions and the fact that TVP is aware of this litigation and has chosen not to participate, I am satisfied that there is no reasonable prospect of future litigation for copyright infringement if the copyright owner is not added as a party.

[13] There has been delay in bringing this motion. In Entral, the motion was brought relatively early in the proceedings. However, the within action was commenced over two and a half years ago. The defendants have been aware that the copyright owners are not parties since the outset. The defendants waited until March 20, 2013 to advise for the first time that they intended to bring a motion to challenge the plaintiffs’ standing. The affidavit evidence filed on behalf of IMB on this motion, being an affidavit from a librarian at the law firm of counsel for IMB, does not explain why IMB waited approximately two and a half years to bring this motion.

[14] Pleadings are closed, affidavits of documents have been served and examinations for discovery have been conducted. The action is close to being set down for trial. If the copyright owners are added at this stage, although IMB indicates that they do not wish to examine the copyright owners for discovery, delay will result from any motion to add parties, further pleadings and service on the copyright owners in Poland.

[15] Although the defendants rely in part on the existence of the proceedings in the United States as referenced in the Williams affidavit, based on the evidence before me I am satisfied that the subject matter of the U.S. litigation is not relevant to the within action (Spanski affidavit, paras 47-51).

[16] The motion is dismissed.

[17] If any party seeks costs and if after reasonable attempts have been made to resolve the issue of costs the parties are unable to resolve the issue of costs, any party seeking costs shall serve and file brief written submissions on costs of two pages or less in length on or before October 4, 2013. Any responding submissions shall also be two pages or less in length and served and filed on or before October 18, 2013. Reply submissions if any shall be one page or less in length and served and filed on or before October 25, 2013. The submissions shall be filed with assistant trial coordinator Conrad Diamante, 393 University Avenue, 6th floor and shall be filed with an affidavit of service and a copy of the filing party’s costs outline.

Master McAfee

Date: September 11, 2013