T-3955-75
BMI Canada Limited (Plaintiff)
v.
James William Der (Defendant)
Trial Division, Collier J.—Ottawa, March 26 and
April 8, 1976.
Copyright—Injunction—Plaintiff owner of performing
rights in certain musical works—Defendant permitting works
to be performed on his premises, infringing plaintiff's rights—
Plaintiff seeking injunction restraining performance of specific
works, and any works in which it holds the rights in future—
Plaintiff submitting draft judgment—Copyright Act, R.S.C.
1970, c. C-30, ss. 20, 50(9),(10)—Federal Court Rule 324.
Plaintiff, a performing rights company, owned the rights to
six songs which defendant caused or permitted to be performed
in his establishment without plaintiff's consent, thereby violat
ing and infringing plaintiff's rights. Defendant did not file a
defence, and plaintiff sought a default judgment, submitting a
draft judgment, seeking (1) an injunction restraining defendant
from performing the six songs in the future (2) an injunction
restraining defendant from using in the future any musical
work for which plaintiff holds the rights (unless, in both cases,
he obtains an annual licence, or tenders single performance
fees), and (3) damages, estimating the amount spent by defend
ant on entertainment in 1974, in order to claim an annual
licence for 1974 and 1975.
Held, plaintiff is entitled to damages, and defendant is
restrained from future use of the six songs in question unless a
licence is obtained, or fees tendered. Plaintiff's claim (2) for a
perpetual injunction is very wide in scope. To justify it, plaintiff
argued that in its statement of claim it alleged that defendant
had, during 1974 and 1975, presented performances of works in
which plaintiff owned the rights, and that it would continue to
do so in the future. However, on the plain meaning of that part
of its claim, plaintiff has simply alleged that during 1974 and
1975, defendant presented live musical entertainment to the
public, and will continue to present performances of works in
which plaintiff holds the rights. Based on - this barren assertion,
plaintiff is not entitled to an injunction restraining defendant
from ever performing any works in plaintiff's repertoire (copy-
right or ownership of performing rights can subsist only in
individual works). The Court's discretion to grant an injunction
applies whether defendant has contested or not. To obtain such
a quia timet injunction, plaintiff must plead cogent, material
facts, not vague allegations, and, even on a motion for default
judgment, the Court must, based on the facts, be able to
conclude that the relief sought is warranted. Plaintiff has not
shown a strong probability that the apprehended wrong will
arise, as is requisite in such a case.
As to plaintiff's claim for damages, it attempted to convert a
claim essentially for unliquidated damages to one for a liqui
dated amount. There is no allegation of infringement for 1974,
nor of failure to pay fees. Plaintiff is not entitled to monetary
relief for 1974. For 1975, the tariff provides that the licensee
shall estimate his fee payable based on the amount paid for
entertainment in 1974. The licenser is not entitled to do so.
Plaintiff is not entitled to liquidated damages, but to damages
or loss of profits to be assessed.
Attorney-General v. Corporation of Manchester [1893] 2
Ch. D. 87 and Matthew v. Guardian Assurance Co. (1919)
58 S.C.R. 47, applied. Composers, Authors & Publishers
Association of Canada Ltd. v. Yvon Robert Lounge Inc.
(1967) 51 C.P.R. 302; Composers, Authors & Publishers
Association of Canada Ltd. v. Cafe Rugantino Inc. (1968)
52 C.P.R. 16; Composers, Authors & Publishers Associa
tion of Canada Ltd. v. D'Aoust (La Sentinelle) (1968) 54
C.P.R. 164; Composers, Authors & Publishers Associa
tion of Canada Ltd. v. Keet (1971) 1 C.P.R. (2d) 283,
disagreed with.
MOTION.
COUNSEL:
Y. A. George Hynna for plaintiff.
SOLICITORS:
Gowling & Henderson, Ottawa, for plaintiff.
The following are the reasons for judgment
rendered in English by
COLLIER J.: This motion is brought in writing
pursuant to Rule 324. The plaintiff seeks, under
the appropriate Rules of Court, judgment in
default of defence. The material proving the
default is all in order. A draft judgment was
submitted. I raised some question as to the extent
of the relief spelled out in the proposed judgment
and requested oral submissions on behalf of the
plaintiff. Those have been made.
There are two other motions (T-4594-75 and
T-3953-75) where similar applications for judg
ment in default of defence are pending and where
similar draft judgments have been submitted.
These reasons will apply to those two actions.
The plaintiff is a performing rights company. It
carries on in Canada the business of acquiring
copyrights of dramatico-musical works. It deals
with the issue or grant of licences for the perform
ance of those works in which copyright is alleged
to subsist. It is the owner of the performing rights
of a large number of musical works in current use
in Canada. It is entitled to sue for copyright
infringement (see section 20 of the Copyright
Act').
Under subsection 50(9) a performing right
society can, as well, sue for or collect fees in
respect of licences granted by it where the fees,
charges or royalties have been approved by the
Copyright Appeal Board. The tariffs of fees relied
on by the plaintiff for the relevant years in this
action have been duly approved by the Board.
Subsections 50(9) and (10) are pertinent. I
reproduce them here:
50. (9) The statement of fees, charges or royalties so certi
fied as approved by the Copyright Appeal Board shall be the
fees, charges or royalties which the society, association or
company concerned may respectively lawfully sue for or collect
in respect of the issue or grant by it of licences for the
performance of all or any of its works in Canada during the
ensuing calendar year in respect of which the statements were
filed as aforesaid.
(10) No such society, association or company shall have any
right of action or any right to enforce any civil or summary
remedy for infringement of the performing right in any
dramatico-musical or musical work claimed by any such socie
ty, association or company against any person who has tendered
or paid to such society, association or company the fees,
charges or royalties that have been approved as aforesaid. R.S.,
c. 55, s. 50.
The defendant to this action resides in the Town
of Fairview, Alberta, and operates a public house
known as the Dragon Inn.
R.S.C. 1970, c. C-30.
All of the above facts are substantially set out in
the first few paragraphs of the statement of claim.
Paragraph 6 of the statement of claim goes on to
set out how the fees are calculated in the case of
licences granted by the plaintiff to nightclubs,
hotels and other similar establishments where
musical works are performed in public. The tariffs
themselves provide that in the case of operators in
the above categories a licensee is required to report
to the plaintiff its gross entertainment expenses for
the year; the plaintiff has the right to examine the
licensee's books and records. Those provisions have
no direct application to the defendant here. The
defendant was not, at any material time, a licen
see. One of the objects of the suit against him is to
obtain compensation for alleged infringement
because he did not in fact hold a licence or tender
payment of approved fees. A further object of this
suit, which I think is reasonably to be inferred
from the pleadings and from the draft judgment, is
to compel the defendant and others like him to
take out annual licenses.
I turn now to paragraphs 8 and 9 of the state
ment of claim which are, in my view, the key
allegations giving rise to the claim for relief. I set
them out:
8. On the night of May 30th, 1975, the defendant caused to be
performed or permitted or authorized live musical entertain
ment to take place in public at its premises at Fairview,
Alberta. On that evening, a series of 12 musical works were
performed. Of these, 6 were songs for which copyright exists in
Canada and for which the performing rights therein are vested
in the plaintiff. The works referred to are set out more particu
larly as follows:
For The Good Times
Let Me Be There
Since I Met You Baby
International Airport
Me and Bobby McGee
Blue Suede Shoes
9. The performances of the works referred to in paragraph 8
above, occurred without the consent of the plaintiff, and consti
tute a violation and an infringement of the performing right
held therein by the plaintiff.
The defendant by his failure to file a defence is
deemed to have admitted those allegations. The
plaintiff is, in my opinion, entitled to injunctive
relief in respect of those particular infringing acts.
I accept generally the form of the restraining
provision set out in paragraph 2 of the plaintiff's
draft judgment 2 . It is as follows:
2. THIS COURT DOTH FURTHER ORDER AND ADJUDGE that,
commencing as from this Judgment, the Defendant be
restrained, himself or through his servants, agents, workmen or
otherwise from using, performing or causing to be performed in
public, on premises under his control, the musical works
referred to below during the period of time for which the
plaintiff has exclusive rights therein unless a licence for any of
such musical works to be so used, performed or caused to be
performed is obtained in accordance with the Copyright Act,
R.S.C. 1970, c. C-30 and the statement of fees, charges or
royalties approved under section 50 thereof.
For The Good Times
Let Me Be There
Since I Met You Baby
International Airport
Me and Boby [sic] McGee
Blue Suede Shoes
In summary up to this point, the relief sought by
the plaintiff is an injunction restraining the
defendant from performing, in the future, the six
listed songs (in which he has already infringed
copyright) unless he obtains an annual licence or
tenders single performance fees.
The plaintiff's draft judgment then continues. I
quote paragraph 3:
3. AND THIS COURT DOTH FURTHER ORDER AND ADJUDGE that
commencing as from this Judgment, the defendant be
restrained, himself, or through his servants, agents, workmen or
otherwise from using, performing or causing to be performed in
public, on premises under his control, musical works the per
forming rights for which in Canada are owned by the plaintiff,
at the date hereof and during the period of time for which the
plaintiff has exclusive rights therein, unless a licence for any of
such muscial [sic] works to be so used, performed or caused to
be performed is obtained in accordance with the Copyright Act,
R.S.C. 1970, c. C-30 and the statement of fees, charges or
royalties approved under section 50 thereof.
What the plaintiff seeks here is a perpetual
injunction restraining the defendant from perform
ing, at any time, any works in which the plaintiff
2 Counsel for the plaintiff agreed that the proviso in para
graph 2 of the draft should cover not only the situation where
the defendant might obtain an annual licence to perform the
particular musical works but also where he might tender the
appropriate fee for a single performance of an individual work.
In the latter case the fees are set out in item 19 of the plaintiff's
tariff (see Canada Gazette, Part I, February 27, 1974, Vol.
108, EXTRA No. 6, and Canada Gazette, Part I, March 7,
1975, Vol. 109, EXTRA No. 9).
owns the performing rights—without specifying
any particular works which the defendant has
threatened to perform, or which the plaintiff rea
sonably and probably fears the defendant will
perform. Analogies are usually imperfect and
often dangerous. Nevertheless, this is somewhat
similar to a plaintiff who, having successfully
proven (by default or evidence) infringement of
claims 1, 2 and 3 of a patent, then claims to be
entitled to enjoin the defendant from potential
infringement of claims 4, 5 and 6 of the same
patent; or having successfully proved the defend
ant in a labour dispute should be enjoined from his
present picketing activities at plaintiff's premises
A, should be thereafter enjoined from picketing at
any of the plaintiff's premises in any subsequent
labour conflict which arises out of, for example,
the same collective agreement.
It must be remembered that there is no copy
right or ownership of performing rights in a reper
toire. The copyright is in the individual works.
The scope of the restraining order sought in this
paragraph is very wide indeed. The plaintiff, to
justify it, relies on the allegations in paragraph 10
of the statement of claim, and the failure of the
defendant to defend or dispute them. I set out
paragraph 10:
10. The defendant has during the years 1974 and 1975 similar
ly continuously presented live musical entertainment to the
public and will continue to cause regular public performances
of works in which the plaintiff owns the performing rights for
Canada. In so doing, the defendant will further infringe the
plaintiff's rights and will make profits thereby.
The plaintiff argues this is an allegation that the
defendant has, during 1974 and 1975, presented
live musical entertainment including public
performances of works in which the plaintiff
owned the performing rights, and that the defend
ant will continue to present similar performances
of the plaintiff's works in the future.
I do not so read paragraph 10. The defendant,
as a layman, is entitled to read the allegation in its
plain, ordinary meaning. As I see it, paragraph 10
alleges this:
(a) The defendant during 1974 and 1975 pre
sented live musical entertainment to the public
("similarly continuously''—whatever those
words mean). Assuming that to be admitted, it
does not form any basis for the injunctive relief
sought.
(b) The defendant [my interpretation of the
remainder of paragraph 10] "... will continue
to cause regular public performances of works in
which the plaintiff owns the performing rights in
Canada".
I do not think that I am, in that interpretation,
splitting hairs or being overly technical. It is on
those quoted words alone, in my view, that the
plaintiff must rely in support of the broad injunc
tion sought in paragraph 3 of the draft.
The plaintiff contends that the defendant by not
defending this action (in whole or in part) admits
that he will in fact continue to cause regular public
performances which will infringe the plaintiff's
rights; that the defendant in effect concedes the
wide relief claimed. The plaintiff relies on, as legal
authority for the broad restraining terms sought,
the form of orders given in a number of cases in
the Quebec Superior Court. I shall refer later to
those decisions.
In my opinion, the plaintiff is not entitled to an
injunction, based on the barren assertion quoted
above, restraining the defendant from ever per
forming any works in the plaintiff's repertoire
without first obtaining an annual licence or tender
ing an appropriate individual fee. The court always
has a discretion as to whether or not an injunction
will be granted. That discretion, as I see it, applies
even if the defendant has not seen fit to appear to
contest, in whole or in part, the allegations made.
In my view the plaintiff, in paragraph 10, is
really seeking a form of quia timet relief. To
obtain injunctive relief against that type of threat
ened or apprehended harm there must, in my
opinion, be pleaded cogent precise material facts'
and not mere vague, skimpy allegations as done
here. Even on a motion for default judgment, the
Court must be able to conclude, from the material
'See Rule 408(1) "... a precise statement of the material
facts...."
facts, that the relief sought is warranted by those
facts.
I refer to the often-cited case of Attorney-Gen
eral v. Corporation of Manchester 4 where Chitty
J. reviewed a number of authorities dealing with
the quia timet type of relief. He said at pages 91-
92:
The principle appears to be the same whether the alleged future
nuisance is public or private. In one of the cases to which I have
referred, the alleged nuisance was a public nuisance; in others a
private nuisance. In some, acts had been done which, it was
alleged, would result in future mischief or injury, but which
had not already resulted in injury or substantial damage; in
others, there was mere threat or intention. But in regard to all
such cases the principle is the same. Where it is certain that the
injury will arise, the Court will at once interfere by injunction;
as, for instance, in the case of a threat to cut a permanent ditch
across a public highway. But the Court does not require
absolute certainty before it intervenes; something less will
suffice (see Lord Brougham's judgment in Earl of Ripon v.
Hobart (3 My. & K. 169, 176)). In Crowder v. Tinkler (19
Ves. 617) (the gunpowder case), Lord Eldon, who granted the
injunction, spoke of "extreme probability of irreparable injury"
(19 Ves. 622). In Attorney-General v. Mayor of Kingston, (34
L.J. (Ch.) 481; 13 W.R. 888, 891) Vice-Chancellor Wood, who
refused the injunction, considered the question to be whether
there was evidence of an actual nuisance committed, or "evi-
dence of the extreme probability of a nuisance if that which
was being done was allowed to continue." In Fleet v. Met
ropolitan Asylums Board (1 Times L.R. 80; 2 Times L.R. 361,
362), the Darenth Hospital Camp case, where the hospital was
in actual operation, the Court refused the injunction, Lord
Justice Cotton, in his judgment, laying it down that "the
plaintiffs must make out that there was real danger, otherwise,
however much they might feel the hospital to be an annoyance,
they could not get an injunction." The principle which I think
may be properly and safely extracted from the quia timet
authorities is, that the plaintiff must shew a strong case of
probability that the apprehended mischief will, in fact, arise.
The court in that case was dealing with nui
sance. In my view the general principle cited by
Chitty J. is applicable to other types of cases as
wells. The plaintiff here has not, to my mind, on
[1893] 2 Ch. D. 87.
3 Attorney-General v. Corporation of Manchester was
referred to with approval by Anglin J. in Matthew v. Guardian
Assurance Co. (1919) 58 S.C.R. 47 at page 61. In the latter
case an injunction was sought to prevent an insurance agent
from obtaining, as attorney for a fire insurance company, a
licence under the appropriate British Columbia legislation.
the matters asserted in the pleading, shown a
strong probability that the apprehended wrong
will, in fact, arise.
The Quebec Superior Court decisions are as
follows: Composers, Authors & Publishers Asso
ciation of Canada Ltd. v. Yvon Robert Lounge Inc.
(1967) 51 C.P.R. 302; Composers, Authors &
Publishers Association of Canada Ltd. v. Cafe
Rugantino Inc. (1968) 52 C.P.R. 16; Composers,
Authors & Publishers Association of Canada Ltd.
v. D'Aoust (La Sentinelle) (1968) 54 C.P.R. 164
and Composers, Authors & Publishers Associa
tion of Canada Ltd. v. Keet (1971) 1 C.P.R. (2d)
283.
Those judgments are of course not binding on
this Court. So far as I can see the points I now
raise were not raised in those cases. The editors of
the Canadian Patent Reporter were, I venture to
suggest, startled by the width of the injunction
granted in the first cited of the above cases. The
editorial note reads as follows:
The significance of the present report is to be found in the
broad scope of the injunction. It was not limited to the specific
works infringed. It related to any musical work owned by the
plaintiff.
In the subsequent cases, there was further simi
lar editorial comment as to the wide extent of the
injunctions allowed.
I am not prepared, on the facts of the case
before me, nor on principle, to grant the relief
sought in paragraph 3 of the draft judgment.
There is one remaining point. Paragraph 1 of
the draft judgment reads:
1. THIS COURT DOTH ORDER AND ADJUDGE that the said Plain
tiff recover from the said Defendant the sum of $220.00 on
account of fees for the years 1974 and 1975.
This clause is based on the matters alleged in
paragraph 11 of the statement of claim, which I
quote:
11. During the year 1974 the defendant caused to be spent for
the procurement of entertainment of which music formed a
part on its aforesaid premises the sum of $12,000.00. Fees
payable for a licence for the year 1974 in accordance with the
Tariffs referred to in paragraph 7 amount to $110.00. The
estimated fee payable for the year 1975 in accordance with the
said Tariffs amounts to $110.00.
That paragraph of the statement of claim comes
from the provisions of item 2 of the tariffs set out
in the 1974 and 1975 Gazette references. I quote
the relevant portions of the 1974 reference (the
1975 reference is the same, with, however, neces
sary changes in respect of the particular years
referred to):
2. CABARETS, CAFES, CLUBS, COCKTAIL BARS, DINING ROOMS,
HOTELS, LOUNGES, RESTAURANTS, ROADHOUSES, TAVERNS, AND
SIMILAR ESTABLISHMENTS
BMI CANADA LIMITED may collect a fee from the occupiers or
operators of cabarets, cafes, clubs, cocktail bars, dining rooms,
hotels, lounges, restaurants, roadhouses, taverns, and similar
establishments where live music is publicly performed. The
establishment shall estimate the fee payable for 1974 based on
the amount paid by such establishment in the calendar year
1973 for entertainment of which music formed a part and shall
pay such estimated fee to BMI CANADA LIMITED on or before the
last day of January 1974.
If performances of music have not taken place for the entire
year 1973, a report shall be made estimating the amount which
shall be expended for the year 1974.
On or before January 31, 1975, an adjustment of the licence fee
paid shall be made on the basis of the amount paid by such
establishment in the calendar year 1974 for entertainment of
which music formed a part. Any additional fee due shall then
be paid to BMI CANADA LIMITED and if the fee due is less than
the amount paid, the establishment shall be credited with the
amount of such overpayment.
The amount paid for entertainment of which music formed a
part is the total amount paid to the orchestra, singers and all
other performers who provide entertainment of which music
formed a part. The amount paid for such entertainment shall
not include amounts expended by the licensee for stage props,
lighting equipment, set design and costumes, or expenditures
for renovation, expansion of facilities or furniture and
equipment.
The plaintiff here, as I see it, is trying to convert
what is essentially a claim for unliquidated dam
ages or an accounting of profits into a claim for a
liquidated amount. The plaintiff estimates the
monies spent by the defendant on entertainment in
1974 in order to claim an annual licence fee of
$110 for that year and also for 1975. I point out,
firstly, there is no allegation of infringement by
the defendant in 1974, nor any allegation of failure
to pay any licence fees. The plaintiff is therefore
not entitled to any monetary relief by way of
damages for the year 1974.
In respect of 1975, item 2 of the tariff provides
that the licensee shall estimate the licence fee
payable for 1975 based on the amount paid by him
for entertainment in 1974. The tariff does not
authorize the Performing Right Society (the lic-
enser) to estimate the annual fee.
It may well be that the tariff set out in item 2
would be a useful guide to the tribunal which has
the task of assessing the damages or profits to
which the plaintiff might be entitled. It may also
well be that the tribunal might find item 17 of the
tariff a more useful guide.
In respect of the monetary damages claimed it is
my view the plaintiff is not entitled in this proceed
ing to judgment for a liquidated amount. It is
entitled to damages or loss of profits, to be
assessed. I direct a reference on that point. The
judgment I am prepared to grant is as follows (it
will be the pronouncement pursuant to Rule 337):
JUDGMENT
1. This court orders and adjudges that the plain
tiff recover from the defendant damages or profits
to be assessed, and that there be a reference to
determine the amount of damages or profits. The
profits or damages so determined shall be paid by
the defendant to the plaintiff forthwith after the
determination thereof.
2. This court further orders and adjudges that,
commencing as from this judgment, the defendant
be restrained, himself or through his servants,
agents, workmen or otherwise from using, per
forming or causing to be performed in public, on
premises under his control, the musical works
referred to below during the period of time for
which the plaintiff has exclusive rights therein
unless a licence for any of such musical works to
be so used, performed or caused to be performed is
obtained, or fees tendered, in accordance with the
Copyright Act, R.S.C. 1970, c. C-30 and the
statement of fees, charges or royalties approved
under section 50 thereof:
For The Good Times
Let Me Be There
Since I Met You Baby
International Airport
Me and Bobby McGee
Blue Suede Shoes
3. And this court further orders and adjudges that
the plaintiff recover from the defendant, after
taxation, its costs of this action.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.