Leave to Appeal to SCC: Rogers v SOCAN (2016 FCA 28) re Ringtones and Ringbacks
June 24, 2016
By Adam Bobker and Sanjeevan Shivakumar
An application for leave to appeal to the SCC in the case of Rogers Communications Partnership et al v SOCAN, 2015 FC 286, reversed in part by 2016 FCA 28, was recently dismissed.
The issue in this case was a Copyright Board tariff relating to the downloading of ringtones and ringbacks. The tariff initially covered the period from 2003-2005, but was extended to cover 2006-2013. In 2012, the Supreme Court rendered its decisions in Rogers Communications Inc v SOCAN, 2012 SCC 35 (“Rogers”) and Entertainment Software Association v SOCAN, 2012 SCC 34 (“ESA”) finding that the download of video games and musical works over the internet were not communications of works to the public, but were reproductions. In light of these decisions, the plaintiffs ceased payment of royalties to SOCAN for ringtone downloads despite the existence of the tariff.
At trial, the plaintiffs sought to invalidate the tariff, arguing that the download of ringtones did not constitute communications of musical works to the public as contemplated by section 3(1)(f) of the Copyright Act. Alternatively, the plaintiffs argued that the Board lacked jurisdiction to certify a tariff on ringtone downloads. After determining issues of res judicata and estoppel did not preclude the plaintiff’s claims, the Court found that, while the Board had jurisdiction to impose a tariff, the tariff was of no force subsequent to the Supreme Court’s decisions in Rogers and ESA1. In line with this, the Court held that the principles outlined in the Rogers and ESA decisions supported a finding that downloads of ringtones were reproductions of musical works but not public communications2. The plaintiffs further raised an unjust enrichment claim against SOCAN, but the Court rejected it3 and denied an order tracing distribution of the tariff royalties4.
Both parties appealed the decision. The Federal Court of Appeal allowed in part both the appeal and cross-appeal as regards to issue estoppel and the Federal Court’s authority over certain questions of mixed fact and law.5 The trial court determined that the plaintiffs’ claim was not barred by res judicata because the Board’s earlier decision to certify a tariff had not been final so as to evoke issue or cause of action estoppel. This was reversed by the Federal Court of Appeal.6 The Federal Court of Appeal confirmed on appeal that the Copyright Board had jurisdiction to certify the disputed tariff.7 However, the finding that ringtones did not constitute communication and engaged only the reproduction right under section 3(1)(f) of the Act was not an issue before the Court.8 As such, that part of the trial judgement remains. Leave to appeal to The Supreme Court was dismissed with costs on June 23, 2016.9
1 Rogers Communications Partnership et. al v. SOCAN, 2015 FC 286 at paras 49-50.
2 Ibid. at para 44.
3 Ibid. at paras 59-60.
4 Ibid. at para 62.
5 Rogers Communications Partnership et. al v. SOCAN, 2016 FCA 28 at paras 41, 45, 56.
6 Ibid. at para 68.
7 Ibid. at paras 104-105.
8 Ibid. at para 100.
9 Rogers Communications Partnership et. al v. SOCAN, 2016 FCA 28, leave to appeal to SCC refused, 36907 (23 June 2016).
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