Judgments

[1993] 3 F.C. 227

T-36-91

Georges De Tervagne and Société des auteurs et compositeurs dramatiques (Plaintiffs)

v.

Town of Beloeil, Centre culturel de Beloeil, Les Productions de la Coulisse Inc., Dominique Neveu and Léo Ilial (Defendants)

Indexed as: De Tervagne v. Beloeil (Town) (T.D.)

Trial Division, Joyal J.—Montréal, November 3, 24, 1992 and January 12, 1993; Ottawa, May 4, 1993.

Copyright — Infringement — Who authorized public performance of play within meaning of Copyright Act, s. 3(1)? — Case law reviewed as to meaning of “authorize” — Essential element: defendant’s degree of control over infringer.

The play Pique-Nique en Ville was performed at Beloeil without the author’s consent. The town of Beloeil was the owner of the cultural centre where the play was performed. Les Productions de la Coulisse Inc. was a non-profit corporation established to provide cultural activities to the residents of the town and surrounding area. It made an agreement with the producer, Bossac, who has since made an assignment in bankruptcy, to rent the Centre to him for the performance of the play. Ilial was director of the play, and Neveu the stage designer.

The plaintiffs’ action was for copyright infringement. At the outset, Bossac and his theatrical company had also been named as defendants, but the action was discontinued as against them when Bossac declared bankruptcy. Infringement was admitted. The issue was who authorized the performance of the play within the meaning of the Copyright Act.

Held, the action should be dismissed.

The fundamental doctrine is that the authorization of any act reserved for the author under the Copyright Act without his consent constitutes infringement.

The leading decision in Canada interpreting the concept of authorization is Muzak Corp. v. Composers, Authors, etc., [1953] 2 S.C.R. 182, where the Supreme Court of Canada reaffirmed the earlier decision of Vigneux et al. v. Canadian Performing Rights Society (1943), 4 Fox Pat. C. 183 (P.C.) and where it applied and laid down three principles: (1) In order to authorize, a person must sanction, approve or countenance something more than the mere use of the equipment that might possibly be used in an actual infringement of a copyright; (2) In order to authorize, a person must sanction, approve or countenance more than the mere use of equipment that might possibly be used in an infringing performance but, on the other hand, a person need not go so far as to grant or purport to grant the right to perform; (3) It is possible to establish that a person has sanctioned, approved or countenanced an actual infringing activity if it is shown that certain relationships existed between the alleged authorizer and the actual infringer, or that the alleged authorizer conducted himself in a certain manner.

A survey of the case law relating to the concept of authorization revealed that each case essentially turns on its facts and that the Court must give judgment on those facts. The essential element is the degree of control (often on the basis of the master-servant or employer-employee relationship) exercised by the defendants over the people who committed the infringement.

In the case at bar, the producer of the play, Bossac, alone had control over the play. The other defendants were not in such a position as would have enabled them to authorize the infringement. The mere fact that the town of Beloeil and Les Productions de la Coulisse Inc. rented the hall to Bossac, even though this in a way made possible or facilitated the infringement, did not support a finding that they authorized the performance of a play which infringed copyright. They could reasonably have assumed that the purpose of renting the hall was to present a play in a lawful manner. The participation of Ilial and Neveu was strictly in their relationship as employees of Bossac. They were at all times subject to his authority.

STATUTES AND REGULATIONS JUDICIALLY CONSIDERED

Bankruptcy Act, R.S.C., 1985, c. B-3.

Civil Code of Lower Canada.

Copyright Act, R.S.C., 1985, c. C-42, ss. 3(1) (as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 2; S.C. 1988, c. 65, s. 62), 27(1),(5), Schedule II.

Federal Court Rules, C.R.C., c. 663, Tariff B (as am. by SOR/79-57, s. 37; 87-221, s. 8).

CASES JUDICIALLY CONSIDERED

APPLIED:

Underwriters’ Survey Bureau Ltd. et al. v. Massie & Renwick Ltd., [1938] Ex.C.R. 103; [1938] 2 D.L.R. 31; (1938), 69 C.C.C. 342; 5 I.L.R. 65; affd as to meaning of “authorize” [1940] S.C.R. 218; [1940] 1 D.L.R. 625; (1940), 7 I.L.R. 19; Vigneux et al. v. Canadian Performing Rights Society (1943), 4 Fox Pat. C. 183; [1945] 2 D.L.R. 1; (1943), 4 C.P.R. 65; [1945] A.C. 108; [1945] 1 All E.R. 432 (P.C.); Muzak Corp. v. Composers, Authors, etc., [1953] 2 S.C.R. 182; (1953), 19 C.P.R. 1; 13 Fox Pat. C. 168.

DISTINGUISHED:

Canadian Performing Rights Society Ltd. v. Canadian National Exhibition Association, [1934] O.R. 610; [1934] 4 D.L.R. 154 (H.C.); Canadian Performing Right Society Ltd. v. Canadian National Exhibition Association, [1938] O.R. 476; [1938] 2 D.L.R. 621 (H.C.); Can. Performing Right Soc. v. Ming Yee, [1943] 4 D.L.R. 732; [1943] 3 W.W.R. 268; (1943), 3 C.P.R. 64; 4 Fox Pat. C. 151 (Alta. Dist. Ct.); CBS Songs Ltd v. Amstrad Consumer Electronics plc, [1988] 2 All E.R. 484 (H.L.).

NOT FOLLOWED:

Moorehouse v. University of New South Wales, [1976] R.P.C. 151 (Aust. H.C.); RCA Corporation v. John Fairfax & Sons Ltd., [1982] R.P.C. 91 (N.S.W.S.C.); Winstone v. Wurlitzer Automatic Phonograph Co. of Australia Pty. Ltd., [1946] V.L.R. 338 (Vict. S.C.).

CONSIDERED:

Falcon v. Famous Players Film Co., [1926] 2 K.B. 474 (C.A.); CBS Inc v. Ames Records & Tapes Ltd, [1981] 2 All E.R. 812; [1981] 2 W.L.R. 973 (Ch. D.); Performing Right Society v. Mitchell & Booker (Palais de Danse), Ld., [1924] 1 K.B. 762; Performing Right Society v. Ciryl Theatrical Syndicate, [1924] 1 K.B. 1 (C.A.).

AUTHORS CITED

Fox, H. G. Annotation preceding Vigneux et al. v. Canadian Performing Right Society (1943), 4 Fox Pat. C. 183 (P.C.), p. 184.

Hitchcock, P. D. “Home Copying and Authorization” (1983), 67 C.P.R. (2d) 17.

Laddie, Hugh, et al. The Modern Law of Copyright. London: Butterworths, 1980.

Tamaro, Normand. The Annotated Copyright Act 1991. Translated by Christopher McGuire. Toronto: Carswell, 1991.

ACTION for damages for copyright infringement. Action dismissed.

COUNSEL:

Alain Riendeau and Stéphane Gilker for plaintiffs.

Louis C. Landreville for defendants Ilial and Neveu.

Alain-Claude Desforges for defendants Les Productions de la Coulisse Inc. and town of Beloeil.

SOLICITORS:

Martineau, Walker, Montréal, for plaintiffs.

Landreville & Ferreira, Montréal, for defendants Ilial and Neveu.

Bélanger, Sauvé, Montréal, for defendants Les Productions de la Coulisse Inc. and town of Beloeil.

The following is the English version of the reasons for judgment rendered by

Joyal J.: This is an action for damages brought by the plaintiffs against the defendants for copyright infringement. The plaintiffs contend that the defendants authorized the public performance of the work Pique-Nique en Ville without their consent, which was presented at the Centre culturel de Beloeil from June 17 to August 25, 1990. Accordingly, the plaintiffs claim damages representing a lump sum for all of the performances or a sum representing all of the profits realized by the defendants.

BACKGROUND

(1)       The parties involved

The plaintiff, Georges De Tervagne, is a French playwright who resides in Paris. He is the author of the dramatic work Pique-Nique en Ville, the work which is the subject of this action.

The plaintiff, Société des auteurs et compositeurs dramatiques (hereinafter referred to as the S.A.C.D.), is an association of francophone authors with its head office in Paris. The S.A.C.D. is devoted to defending the material and moral interests of its members.

The defendant town of Beloeil is the owner of the Centre culturel de Beloeil, where the play Pique-Nique en Ville was presented during the summer of 1990. The Centre is a theatre or entertainment centre where cultural works are publicly performed or presented. The Centre has no legal standing.

The defendant, Les Productions de la Coulisse Inc., is a non-profit corporation which was formed to provide cultural advantages for the residents of the town of Beloeil and the municipalities or towns in the region. It made an agreement with a Mr. Serge Bossac to rent the Centre to him for the performance of the play in question.

The defendant Léo Ilial is an actor and director who resides in Montréal. He has been a professional actor for nearly 40 years.

The defendant Dominique Neveu has been a commercial artist by trade for more than 20 years and also resides in the province of Quebec.

The original action was also against the producer of the play, Serge Bossac, to whom reference was made earlier, and his theatrical company, the Compagnie théâtrale S.B. Enr. On November 2, 1990, Mr. Bossac made an assignment under the Bankruptcy Act [R.S.C., 1985, c. B-3]. The plaintiffs then discontinued their action against Mr. Bossac and his company.

(2)       The plaintiffs’ arguments

In their statement of claim, the plaintiffs say that Mr. De Tervagne is a citizen of a country which has adhered to the Convention and Additional Protocol which appear in Schedule II of the Copyright Act, R.S.C., 1985, c. C-42 (hereinafter referred to as the Act). Accordingly, his work enjoys the protection of that Act. As the author of the work, Mr. De Tervagne is, under subsection 3(1) [as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 2; S.C. 1988, c. 65, s. 62], the first owner of the copyright in the work.

Mr. De Tervagne is a member of the S.A.C.D., to which he assigned the management of the rights of adaptation and dramatic performance of the work, and the right to authorize or prohibit the public communication by any process whatsoever of the words, sounds and images of the work, and the reproduction thereof by any means whatsoever and the use thereof for advertising or commercial purposes.

In the July 5, 1990 edition of the Montréal newspaper La Presse, the S.A.C.D. discovered that Mr. De Tervagne’s work was being presented at the Centre culturel de Beloeil. The S.A.C.D. then immediately contacted the Centre and learned that in fact public performances of the work had been taking place since June 17, 1990, and were to continue until August 25, 1990, inclusive. The S.A.C.D. also learned that the corporation Les Productions de la Coulisse had rented the Centre and that it had contracted with Serge Bossac to enable him to present his play at the Centre. The S.A.C.D. was also told that Mr. Bossac was producing the work.

On July 10, 1990, after several discussions with Mr. Bossac, the S.A.C.D. sent him, as the producer of the play, a draft contract establishing the terms on which the performances of the work would be authorized.

The terms on which the licence permitting the public performance of the work would be issued, established in accordance with normal S.A.C.D. guidelines, provided, inter alia, for payment of royalties equal to the highest of:

- $12,500 for all of the performances as a whole;

- 10% of the box office receipts, before entertainment tax, generated by each performance;

- 10% of 50% of the box office receipts, before entertainment tax, which would have been generated by each performance, if the performances had been given to a sold out house.

The plaintiffs’ statement of claim adds that despite numerous requests and notices to this effect, and although the defendants had acknowledged their obligation to obtain authorization from the plaintiffs to present the work, they never agreed to the licence which had been sent to them by the S.A.C.D. or responded to the requests for payment made by the S.A.C.D., and even continued the performances of the play.

The plaintiffs therefore assert that the defendants, contrary to subsection 3(1) of the Act, authorized the public performance of the play Pique-Nique en Ville, and therefore that they are jointly and severally liable for infringing the copyright provided in subsection 27(2) of the Act, and claim damages accordingly.

(3)       The defendants’ arguments

(i)         Les Productions de la Coulisse Inc. and the town of Beloeil:

The defendant Les Productions de la Coulisse Inc. asserts that in the normal course of its activities it was informed of a proposal to produce the play which is the subject of these proceedings, this proposal having been submitted by Mr. Bossac. The defendant therefore made an agreement with Mr. Bossac to lease him the hall in the Centre culturel de Beloeil and to supply him with certain services, but at no time was it associated with the production of the play.

The defendant town of Beloeil asserts that in addition to the contributions it may be asked to make from time to time to Productions de la Coulisse Inc., that corporation is independent of the town and operates autonomously.

Both defendants assert that at no time were they made aware of the discussions held with or undertakings made to the plaintiffs, nor were they made aware of the demands and claims that might be made against them in respect of the copyright associated with the play, during the period when it was being presented. Moreover, the defendants were unaware that the S.A.C.D. had at one time communicated with the Centre culturel de Beloeil. In view of the representations made by Mr. Bossac as to his experience and standing, neither the town of Beloeil nor Les Productions de la Coulisse had reasonable grounds to suspect that the performance or presentation of the play Pique-Nique en Ville constituted an infringement of copyright. For these reasons, the defendants assert that they are not liable for the infringement.

(ii)        The defendant Léo Ilial:

In February 1990 the producer of the play, Mr. Bossac, met with Mr. Ilial and retained his services as director. Mr. Bossac had already decided, before that meeting, to stage the play.

In all the years he has worked in the theatre world, the defendant has never been a producer of theatrical shows. However, it appeared that Mr. Bossac had important gaps in his ability to do the producer’s work, and so the defendant had agreed, in respect of certain specific mandates, to act as production director. However, at no time did the defendant represent himself as the producer of the play. He conducted himself at all times as the agent of the producer, to the knowledge of all third parties.

It was in the course of these mandates, and because he knew a Mr. Louis Portal, a friend of Mr. De Tervagne, that Mr. Ilial stepped in to put Mr. Bossac in touch with the author. The purpose of this was to negotiate a better deal on the copyright. Once this contact was established, the defendant had no knowledge of how the negotiations as to the copyright on the play proceeded. Mr. Bossac did not disclose any information to him about the production during the period when performances of the play were taking place.

Mr. Ilial therefore denied that he had authorized the public performance of this play. He is himself a creditor in the bankruptcy of Mr. Bossac, being owed $4,000, the balance owing on the fee that was agreed upon for his participation in the play.

(iii)       The defendant Dominique Neveu:

In February 1990, Mr. Bossac, who had already decided to stage the play, met with Mr. Neveu and retained his services as a stage designer. Mr. Neveu had always worked in advertising. This was his first experience in the theatre world. During the staging of the play, he occasionally provided assistance to the producer, as a friend, so that the play could be produced. Moreover, Mr. Ilial never held himself out as being a partner in the production and never was. He conducted himself at all times as the agent of the producer, to the knowledge of all third parties.

It was with Mr. Ilial that Mr. Neveu got involved in discussions with Mr. Portal with respect to securing the copyright in the play Pique-Nique en Ville. Mr. Neveu’s role in this matter was the same as Mr. Ilial’s: to put Mr. Bossac in touch with Mr. Portal.

The defendant is himself a creditor in the bankruptcy of Mr. Bossac, being owed $15,646, the balance owing on the fee that was agreed upon for his participation in the play. The defendant denies that he authorized the public performance of the play.

THE ISSUE

The infringement alleged by the plaintiffs is admitted by the defendants. The issue to be determined by this Court is therefore as follows: who authorized the public performance of the play Pique-Nique en Ville within the meaning of the Copyright Act? Was it the defendants, who might be jointly and severally liable? Was it rather Serge Bossac, who produced the play, but who is judgment-proof?

THE APPLICABLE LAW

(1)       Relevant provisions of the Copyright Act:

The parties referred in their argument to the following provisions of the Act:

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 or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

(a) to produce, reproduce, perform or publish any translation of the work,

(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,

(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise,

(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,

(e) subject to subsection (2), in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work by cinematograph, if the author has given the work an original character,

(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication, and

…

and to authorize any such acts.

…

(2) Where the author of any work described in paragraph (1)(e) has not given it any original character, the cinematographic production referred to in that paragraph shall be protected as a photograph.

…

27. (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.

…

(5) Copyright in a work shall be deemed to be infringed by any person who for his private profit permits a theatre or other place of entertainment to be used for the performance in public of the work without the consent of the owner of the copyright, unless that person was not aware, and had no reasonable ground for suspecting, that the performance would be an infringement of copyright. [Emphasis added.]

(2)       Review of the case law:

The fundamental doctrine in this area has been expressed as follows: “The legislator specifies that, besides the rights set out elsewhere in s. 3(1), the copyright owner holds the right to authorize any of these acts. Consequently, the authorization of any act reserved for the author without his consent constitutes infringement [at page 151].” “Thus, a person reproducing a work must first obtain the consent of the owner of the copyright or any other person authorized to consent [at page 240].” Otherwise, he or she commits an infringement. (See The Annotated Copyright Act 1991, Normand Tamaro, Carswell, 1991.)

The meaning which is to be given to the expression “authorize”, as it is used by Parliament in subsection 3(1) of the Act, has been interpreted on a number of occasions in the case law.

First, in England, it was established in Falcon v. Famous Players Film Co., [1926] 2 K.B. 474 (C.A.), that the expression “authorize” must be interpreted in its ordinary sense as meaning “sanction, approve and countenance”. In that decision, the author of a dramatic work had assigned the sole performing right in his work in the United Kingdom to the plaintiff. Subsequently, the author sold motion picture rights in his work throughout the world to the defendants. The defendants then produced a film based on the work in question and granted the owner of a theatre in the United Kingdom the right to exhibit the film. The Court of Appeal held that the defendants had authorized the owner of the theatre to exhibit the film, and were therefore liable for infringement of the plaintiff’s performing right. Bankes L.J. stated, at page 491:

In the present statute, that language has been deliberately dropped, and for the word “cause” has been substituted the word “authorise”; and the decision of Tomlin J. in Evans v. Hulton and the dictum of Buckley L.J. in Monckton v. Pathé Frères, both clearly indicate that in the opinion of these learned judges the present expression is to be understood in its ordinary dictionary sense of “sanction, approve, and countenance.”

At page 499, Atkin L.J. restricted the definition of the expression “authorize” as follows:

For the purposes of this case it appears to me that to “authorize” means to grant or purport to grant to a third person the right to do the act complained of, whether the intention is that the grantee shall do the act on his own account, or only on account of the grantor ….

In Canada, three decisions in particular have interpreted the concept of authorization. In Underwriters’ Survey Bureau Ltd. et al. v. Massie & Renwick Ltd., [1938] Ex.C.R. 103, affirmed [in this respect] by the Supreme Court of Canada at [1940] S.C.R. 218, Maclean J. confirmed, at page 122, that the definition of the expression “authorize” laid down in the English decision in Falcon’s case, supra, applies in Canada:

The word “authorize”, in the last line of s. 3 (1) of the Copyright Act has been judicially construed to include anyone who sanctions, approves, or countenances ….

Another case, which is Canadian in origin although it was decided by the Privy Council, is Vigneux et al. v. Canadian Performing Right Society (1943), 4 Fox Pat. C. 183. In that decision the defendants Vigneux Brothers, had supplied a phonograph to the restaurant owned by the co-defendant Raes, for which they supplied records in return for a fixed monthly rental. The plaintiff C.P.R.S. asserted that the defendants had authorized the public performance of the musical piece Star Dust which had been played on the defendants’ machine on one occasion. The Privy Council held that the defendants Vigneux Brothers could not be held liable for having authorized the public performance of the work in question, since they had no control over the use of the machine. At page 194 of the decision, Lord Russell states that Vigneux Brothers did not give the alleged performance, nor did they authorize it:

They had no control over the use of the machine; they had no voice as to whether at any particular time it was to be available to the restaurant customers or not. The only part which they played in the matter was, in the ordinary course of their business, to hire out to Raes one of their machines and supply it with records, at a weekly rental of ten dollars.

At page 152 of his work The Annotated Copyright Act 1991, the author Normand Tamaro, supra, interprets this passage from the reasons of Lord Russell as follows:

The person authorizing the performance of a work by mechanical means, and not the one simply providing it, is the one who is in control of the instrument.

…

In other words, the person authorizing the performance is the person making it possible.

…

[translation] It therefore cannot be argued that the person whose role is nothing more than to supply the means by which the public performance of the work is made possible authorizes a public performance.[*]

In England, Whitford J. took the same position in CBS Inc v. Ames Records& Tapes Ltd, [1981] 2 All E.R. 812 (Ch. D.). In that case, Whitford J. decided that a record shop which rented out records and at the same time offered blank cassettes at discount prices was not authorizing copyright infringement. At page 821, he stated:

Any ordinary person would, I think, assume that an authorisation can only come from somebody having or purporting to have authority and that an act is not authorised by somebody who merely enables or possibly assists or even encourages another to do an act, but does not purport to have any authority which he can grant to justify the doing of the act.

However, we should not forget two Australian decisions which adopted a somewhat different interpretation. First, in Moorhouse v. University of New South Wales, [1976] R.P.C. 151 (Aust. H.C.), a library had installed photocopying services in its premises. On that point, Gibbs J. held [at page 159]:

… a person who has under his control the means by which an infringement of copyright may be committed—such as a photocopying machine—and who makes it available to other persons, knowing, or having reason to suspect, that it is likely to be used for the purpose of committing an infringement, and omitting to take reasonable steps to limit its use to legitimate purposes, would authorise any infringement that resulted from its use. [Emphasis added.]

In another Australian case, RCA Corporation v. John Fairfax & Sons Ltd., [1982] R.P.C. 91 (N.S.W.S.C.), at page 100, Kearney J. approved the following passage taken from The Modern Law of Copyright (1980) by Laddie, Prescott and Victoria:

… a person may be said to authorize another to commit an infringement if the one has some form of control over the other at the time of infringement or, if he has no such control, is responsible for placing in the other’s hands materials which by their nature are almost inevitably to be used for the purpose of an infringement.

This interpretation by the Australian courts must be rejected in Canada, in view of Vigneux, which clearly established that a defendant who simply supplies the means which make the infringement possible cannot be held liable for authorizing the infringement if he or she had no control over the means in question. However, we must note that the decision of the Privy Council in Vigneux has often been criticized since it is contrary to the English decisions which preceded it, such as Falcon’s case. In his annotation preceding Vigneux at 4 Fox Pat. C. 183, Fox made the following comment [at page 184]:

In the present case Vigneux supplied the gramophone and the record. It received payment for both services and gave into the hands of those who gave the performance the means of causing the copyrighted musical work to be performed. It is therefore difficult to ascertain the basis upon which the Board could hold that Vigneux did not authorise the performance. Authorisation does not need to be specific. Even an absence of effort to prevent infringement seems, on the cases, to be sufficient to bring a person within the meaning of the term “authorise”. Of course, there must be some control by the person “authorising” over the person performing, but it cannot be said that Vigneux were strangers to the arrangement. It would seem, therefore, that this case may cast some doubt on the authority of such decisions as Performing Right Society v. Mitchell & Booker (Palais de Danse) Ltd., [1924] 1 K.B. 762; Canadian Performing Right Society Ltd. v. Canadian National Exhibition Association, [1934] O.R. 610; Canadian Performing Right Society Ltd. v. Canadian National Exhibition Association, [1938] O.R. 476.

Following the decision in Vigneux, the Supreme Court of Victoria decided to the contrary in Winstone v. Wurlitzer Automatic Phonograph Co. of Australia Pty. Ltd., [1946] V.L.R. 338 Vict. S.C. In that case, the defendant had installed a phonograph belonging to the defendant company in his restaurant. The plaintiff asserted that the musical work in which he owned the copyright had been played twice in the defendant’s restaurant. The Court held that the owner of the restaurant and the defendant company had authorized the public performance of the work in question. The fact that the defendant company had supplied the records for the phonograph was sufficient to find that it had authorized the public performance of the work since, unlike the facts in Vigneux, the defendant company was to receive a share of the profits. This was therefore a joint venture by the defendants, while in Vigneux the relationship was simply in the normal course of the business of the defendants’ rental firm.

The Supreme Court of Canada had occasion to comment on Vigneux in Muzak Corp. v. Composers, Authors, etc., [1953] 2 S.C.R. 182. In that case, the Supreme Court of Canada did not consider it appropriate to limit the scope of the decision in Vigneux or to criticize the decision rendered. Rather, Kellock J. clearly adopted the passage from the reasons of Lord Russell dealing with the element of control, thereby reaffirming the principle established by him. Accordingly, Vigneux applies in Canada.

Before moving on to an analysis of Muzak, supra, however, let us examine the decisions on which the plaintiffs rely in asserting that the defendants authorized the public performance of the play Pique-Nique en Ville.

First, in Canadian Performing Right Society Ltd. v. Canadian National Exhibition Association, [1934] O.R. 610 (H.C.), Rose C.J.H.C. held that the defendants had authorized the public performance of a substantial part of a musical work in which the plaintiffs owned the copyright, when the work in question was played during one of the performances organized by the defendants. Rose C.J.H.C. concluded that, despite the fact that the defendants had not specifically instructed the musicians to play the work in question, they had control over the band and were therefore liable for the negligence of their servants in the performance of their duty. At page 615, Rose C.J.H.C. added that the test for determining whether a person is a servant or an independent contractor was laid down in Performing Right Society v. Mitchell & Booker (Palais de Danse), Ld., [1924] 1 K.B. 762, by McCardie J., who stated at page 767: “the final test … and certainly the test to be generally applied, lies in the nature and degree of detailed control over the person alleged to be a servant.” Also [at page 769]: “[b]y the employer is meant the person who has a right at the moment to control the doing of the act.” In the case before him, Rose C.J.H.C. concluded that there was a master-servant relationship between the defendants and the bandmaster, given the degree of control exercised by the defendants over him. Despite the fact that there had been no agreement made between the parties as to the selection of musical works, it was clear that the defendants were able to dictate the conduct of the band.

In Canadian Performing Right Society Ltd. v. Canadian National Exhibition Association, [1938] O.R. 476 (H.C.), the defendant had hired Rudy Vallee and his orchestra to play at its dance hall. Greene J. found, at pages 483-484, that the contract between the parties did not give the defendants any control over the selection of musical works or the times when the orchestra was to play. Thus the defendants exercised no control over the orchestra, and under the test established by McCardie J. in Palais de Danse, supra, the orchestra was not a servant but an independent contractor. Greene J. held, however, that this was not sufficient to relieve the defendant of liability since the defendant had made no effort to ensure that the orchestra did not play works protected by copyright. Greene J. therefore held that the defendant had authorized the public performance, under subsection 3(1) of the Act, since the expression “authorize” had to be interpreted in its ordinary sense of “sanction, approve or countenance”.

Finally, in Can. Performing Right Soc. v. Ming Yee, [1943] 4 D.L.R. 732 (Alta. Dist. Ct.), the defendant was the owner of a restaurant and had hired an orchestra to play dance music in his restaurant. No agreement had been made with the orchestra leader as to the selection of musical pieces, and the defendant was not aware in advance of what pieces would be played by the orchestra. The evidence revealed, however, that the orchestra leader played whatever piece the defendant called for, and on the other hand would not have played a piece forbidden by the defendant. Ford D.C.J., at pages 734-735, concluded that even if the orchestra leader was not a servant in the strict sense of the word, under the test established by McCardie J. in Palais de Danse, supra, given the lack of practical control by the defendant over the orchestra, it was nonetheless clearly established that there was a principal-agent relationship. The orchestra leader had acted within the scope of his employment and for the benefit of the defendant. By giving total discretion to the orchestra leader, the defendant tacitly authorized the performance of the two pieces in question. Thus the defendant was liable for the infringement committed by his employee.

The final decision which we should examine is the decision of the Supreme Court of Canada in Muzak Corp. v. Composers, Authors, etc., supra. This is the leading decision in Canada interpreting the concept of authorization. Briefly, the facts are as follows. CAPAC was the owner of the sole right to perform certain musical works in public throughout Canada. CAPAC submitted that Muzak Corporation had authorized the performance of the works by leasing recordings containing the musical works in question to the Canadian ABC franchise (a broadcasting company); these recordings contained the musical pieces in question, which recordings were subsequently broadcast in public by ABC. In its decision, the Supreme Court rejected the authorization connection. First, Rand J. stated that the mere fact of supplying the means which permitted a person to commit an infringement did not amount to authorization. Kellock J. added that unless what was done by a defendant was to sanction, approve or countenance a performance, it cannot be established that such a defendant authorized a performance or representation.

In an article “Home Copying and Authorization” (1983), 67 C.P.R. (2d) 1983, pages 17-49, P. D. Hitchcock offers an excellent analysis of the decision in Muzak. At pages 29-33, the author sets out three principles which were applied and laid down by the Supreme Court of Canada in Muzak.

“The first principle that was applied in Muzak was that in order to ‘authorize’ within the meaning of the Copyright Act, a person must sanction, approve or countenance something more than the mere use of equipment that might possibly be used in an actual infringement of a copyright. Furthermore, the court makes the presumption that a person who authorized an activity authorized that activity only so far as the activity is in accordance with law.” On this point, Rand J. stated, at page 189:

Obviously, in one sense, Muzak authorizes Associated to make use of instruments which it owns but that use is to be in accordance with regulations dealing with it. There is not a syllable in the material to suggest that Muzak has made itself a party in interest to the performance either by warranting the right to perform without fee or by anything in the nature of a partnership or similar business relation. If by letting a device the owner is to be taken as engaging himself to its use in defiance of regulations, the very distinction between the right to make a record and the right to give a public performance by means of it which Mr. Manning made and the Act provides for, is wiped out. It would be as if a person who lets a gun to another is to be charged with “authorizing” hunting without a game license.

“The second principle establishes, as a matter of law, what constitutes the something more than mere use that must be sanctioned, approved or countenanced before a person has made an authorization within the meaning of the Act. [at page 30]” After a detailed examination of Falcon’s case, supra, Kellock J. concluded that the principles laid down in that case could not apply in Muzak, given the distinction between the facts of the two cases. Rather, at page 193, Kellock J. relied on Vigneux to establish the following principle:

In Falcon’s case, Bankes, L.J., with whom Atkin L.J., agreed, approved of earlier expressions of opinion as to the meaning of “authorize”, namely, that it is to be understood in its ordinary dictionary sense of “sanction, approve, and countenance”. Unless what is done by a defendant is to sanction, approve or countenance actual performance, it cannot be said, in my opinion, that it has “authorized” performance. While it is true that to perform by means of such a mechanical contrivance as is here in question involves the use of recordings, and while the appellant, on the evidence, has authorized the use of the recordings in performing, it has not authorized the performance itself and has, therefore, not invaded any right of the respondent. Performance was clearly contemplated and authorized in Falcon’s case, while in the case at bar the appellant is in the position of the appellant in Vigneux’s case, as described by Lord Russell in the passage from the judgment above cited.

The position of Kellock J. may be summarized as follows: “[i]n order to ‘authorize’ a person must sanction, approve or countenance more than mere use of equipment that might possibly be used in an infringing performance but, on the other hand, a person need not go so far as to grant or purport to grant the right to perform” [at page 31].

“The third important principle to be found in the Muzak case is that it is possible to establish that a person has sanctioned, approved or countenanced an actual infringing activity (thereby rebutting the presumption that a person who authorizes an activity does so only so far as it is in accordance with the law), if it is shown that certain relationships existed between the alleged authorizer and the actual infringer, or that the alleged authorizer conducted himself in a certain manner” [at page 32].

According to Hitchcock, at pages 32-33, this principle may be inferred from the decision in Muzak. First, Kellock J., at page 191 of his decision, adopts the passage from the reasons of Lord Russell from the Vigneux case, supra, in which Lord Russell states that the only part the defendants Vigneux Brothers played in the infringement may be summarized as, in the ordinary course of their business, to hire out one of their machines and supply it with records, at a weekly rental. “Similarly, Rand J. implies [at page 189, in the passage quoted supra] that certain conduct or relationships would have been sufficient to rebut the presumption that Muzak had authorized the use of the recordings only so far as that use was in accordance with regulations.”

Hitchcock attempted, at pages 34-43, to define the type of conduct or relationship from which it can be concluded that a person in fact authorized the infringement, within the meaning of the Act, by his or her conduct or relationship with the person who infringed the copyright.

According to Hitchcock, this is primarily a question of fact which depends on the circumstances of each case. The first factor to be considered is the degree of control that the defendant exercised over the infringer. That control must be such that he or she could prevent the infringement from being committed. The second factor is that a reasonable person would be led to conclude that the defendant sanctions, approves or countenances the infringements, and that the defendant should have known that his or her words, actions or inaction would be seen as such by a reasonable person. It is Hitchcock’s opinion that such authorization may be express or implied.

This concept of conduct was examined in the English decision Performing Right Society v. Ciryl Theatrical Syndicate, [1924] 1 K.B. 1 (C.A.). In that case, the managing director of a company which was the lessee of a theatre had, on behalf of the company, engaged a band to play music at performances of a play in the theatre leased by the company. In his absence and without his knowledge, the band performed certain musical works the copyright in which belonged to the plaintiffs. The plaintiffs then asserted that the defendant, which owned the theatre, had authorized the performance of the works or permitted the use of the theatre for that purpose. The Court of Appeal held that the defendant could not have authorized the performances since the band was the servant of the company and not of the defendant.

In his decision, at page 9, Bankes L.J. referred to the question of conduct as follows; this passage was also quoted by Whitford J. in CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 W.L.R. 973 (Ch. D.), at pages 987-988:

I agree … that the court may infer an authorization or permission from acts which fall short of being direct and positive; I go as far as to say that indifference, exhibited by acts of commission or omission, may reach a degree from which authorisation or permission may be inferred. It is a question of fact in each case what is the true inference to be drawn from the conduct of the person who is said to have authorised the performance or permitted the use of a place of entertainment for the performance complained of.

Bankes L.J. concluded, at page 10, that the defendant had not exhibited indifference despite its refusal to take action against the orchestra after the plaintiffs had made it aware of the infringement. He held that since the musicians had been hired by the company and not by the defendant, and since the defendant was not present at the performances in question and was unaware of what pieces would be played by the orchestra, it could not be held liable for having authorized the performance, or for having permitted the use of the theatre for that purpose. At pages 12-13, Scrutton L.J. wrote:

In my opinion, first, a man does not permit who cannot control, and secondly, a man does not permit the use of a place for the performance of a work if he does not know the work is being performed.

In Winstone v. Wurlitzer Automatic Phonograph Co. of Australia Pty. Ltd., supra, the Court held that it could be concluded that there was authorization from the conduct of the defendants or the indifference they exhibited. At page 345, Herring C.J. stated:

It is, of course, a question of fact in each case what is the true inference to be drawn from the conduct of the person said to have authorised the act complained of. And as the acts that may be complained of as infringements of copyright are multifarious, so, too, the conduct that may justify an inference of authorisation may take on an infinite variety of differing forms. In these circumstances any attempt to prescribe beforehand ready-made tests for determining on which side of the line a particular case will fall, would seem doomed to failure. So, too, will it be impossible to determine any particular case by reference merely to the relationship that may exist between the person said to have authorised the act complained of and the actual infringer, though, no doubt in the case of principal and agent an authorisation may be more readily inferred than in the case of vendor and purchaser. In the end the matter must in each case depend on a careful examination of all the relevant facts.

And, at page 347, the Chief Justice added:

It would appear probable, however, that some measure of control of some sort by the person said to have authorised a public performance will usually be found in cases where the inference can properly be drawn that there has been an authorisation in fact. The type and measure of control, however, will vary from case to case according to the circumstances and particularly the nature of the act complained of, the relationship between the alleged “authoriser” and the actual infringer and the means by which the infringement is carried into effect.

ANALYSIS OF THE EVIDENCE

Having completed a survey of the case law relating specifically to the concept of “authorization” in respect of copyright, I find that each case essentially turns on its facts and that the Court must give judgment on those facts. This means that the case law is not always a faithful servant. We would note, for example, the decisions cited by the plaintiffs, in the two Canadian Performing Right Society Ltd. v. Canadian National Exhibition Association cases, and in Can. Performing Right Soc. v. Ming Yee.

In those three decisions, the degree of control exercised by the defendants over the people who committed the infringement was determined on the basis of the master-servant or employer-employee relationship that existed between the parties. In the case at bar, the town of Beloeil and Les Productions de la Coulisse Inc. exercised no control over the producer of the play, Mr. Bossac, or over his theatrical troupe. Moreover, there was no master-servant or employer-employee relationship. Rather, there was a strictly business relationship, which was limited, for Les Productions de la Coulisse Inc., to arrangements for renting the hall, and for the town of Beloeil to the fact that it is the owner of that Centre, the town of Beloeil having never had any transactions with Mr. Bossac. With respect to the other defendants, Mr. Ilial and Mr. Neveu, their relationship with Mr. Bossac was one of employer and employee, and therefore, following the reasoning in the three decisions referred to above, it was Mr. Bossac, in his capacity as employer, who was responsible for acts committed by these two defendants in the course of their employment. I therefore cannot see how these three decisions assist the plaintiffs’ case. In order for these decisions to apply in this case, the defendants would have had, for example, to have hired Mr. Bossac and the theatre troupe and/or exercised direct control over them or over the methods used in the infringement, which was not the case before me.

One final point which I would like to note relates to the issue of the joint liability of the defendants. In CBS Songs Ltd v. Amstrad Consumer Electronics plc, [1988] 2 All E.R. 484 (H.L.), at page 495, Lord Templeman stated the following with respect to the defendants’ joint liability in an action for copyright infringement:

My Lords, joint infringers are two or more persons who act in concert with one another pursuant to a common design in the infringement.

In the case at bar, it cannot logically be said that the defendants acted in concert with Mr. Bossac to commit the infringement. It is therefore unnecessary to consider this question any further.

CONCLUSION

Based on the case law I have examined, I cannot find that the defendants have any liability for the copyright infringement committed. The defendants did not authorize the performances of the play Pique-Nique en Ville within the meaning of subsection 3(1) of the Act. The question of authorization is a question of fact in each case. In this case, the producer of the play, Mr. Bossac, alone had control over the play. The other defendants were not in such a position as would have enabled them to authorize the infringement. The mere fact that the town of Beloeil and Les Productions de la Coulisse Inc. rented the hall to Mr. Bossac, even though this in a way made possible or facilitated the infringement, does not support a finding that they authorized the performance of a play which infringed copyright. The defendants could reasonably have assumed that the purpose of renting the hall was to present a play in a lawful manner. Much more would be needed, according to the reasoning set out in Vigneux or in Muzak, for us to find the defendants liable. The participation of the defendants Ilial and Neveu was strictly in their relationship as employees of Mr. Bossac. They were at all times subject to his authority.

It was Scrutton L.J. in Ciryl (supra) who emphasized the absence of authority. Moreover, the evidence was that neither the town of Beloeil nor Les Productions de la Coulisse Inc. had any control whatsoever over the producer, Mr. Bossac, and over the play he staged. It would be difficult for me to find in the relationship between these parties any implied authority to present the play in such a way as would make them liable.

I do admit that the likely result of this finding is to deny the plaintiffs any redress. This situation is particularly unfortunate in that it was as a result of the patience exhibited by the plaintiff, S.A.C.D., starting on July 5, 1990, that it was unable to exercise its rights until it was too late. It assumed too much good faith on the part of Mr. Bossac, or it relied too much on the reputation he had built up in the trade. It could have expressed its impatience or exasperation by seeking injunctions or seizing receipts. I would venture to assume, however, that the policy of the S.A.C.D. is based on a proper recognition on the part of professionals involved in the theatre and in entertainment in general of their duty to respect copyright. By an unfortunate turn of events, the cause, and not the result, of which was Mr. Bossac’s ultimate bankruptcy, the S.A.C.D. finds itself stripped of its rights. These are truly exceptional circumstances, but they might not be such as would prompt the S.A.C.D. to change its policy. Moreover, the plaintiffs are not the only ones who have suffered a loss in this adventure.

AWARD

For the purposes of any appeal which the plaintiffs might bring, I would fix the amount of the damages to which they would be entitled at $14,000 with interest at the rates set out in the Civil Code of Lower Canada starting on the date of service.

JUDGMENT

The plaintiffs’ action is dismissed with costs. The defendants town of Beloeil and Les Productions de la Coulisse Inc., and the defendants Ilial and Neveu, will be entitled to their respective disbursements. Each of their counsel will be entitled to the costs set out in Tariff B of the Rules of this Court [Federal Court Rules, C.R.C., c. 663 (as am. by SOR/79-57, s. 37; 87-221, s. 8].

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