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
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
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