FEDERAL APPEAL COURT UPHOLDS TARIFF 24 FOR

FEDERAL APPEAL COURT UPHOLDS TARIFF 24 FOR RINGTONES
LAURENT CARRIÈRE AND KARINE JARRY*
LEGER ROBIC RICHARD, LLP
LAWYERS, AND PATENT AND TRADE-MARK AGENTS
PRECIS: The Federal Court of Appeal has confirmed that the transmission of ringtones
by wireless carriers to their customers is a communication to the public by
telecommunication within the meaning of Section 3(1)(f) of the Copyright Act. The
appellants had argued that ringtones being transmitted to customers were not
communicated to the public since transmission occurred on a one-to-one basis.
In Canadian Wireless Telecommunications Association v Society of Composers, Authors
and Music Publishers of Canada the Federal Court of Appeal has confirmed a decision by
the Copyright Board stating that ringtones sold by wireless carriers on their websites
qualify as a communication to the public within the meaning of Section 3(1)(f) of the
Copyright Act, thus warranting a separate royalty to be paid in addition to that being paid
for reproduction rights of musical works. The appellants had sought judicial review of a
certification by the Copyright Board of a Statement of Royalties entitled “SOCAN Tariff
24-Ringtones (2003-2005)” on the premise that Tariff 24 is not authorized by the
Copyright Act. (see “Copyright Board rules on ringtone tariffs”)
Compensation for the reproduction of musical works used for ringtones is the subject of
contracts with collecting societies (ie, the Canadian Musical Reproduction Rights Agency
Limited and the Society for Reproduction Rights of Authors, Composers and Publishers in
Canada).
As was established in Bishop v Stevens , the right to reproduce musical works and the right
to communicate them to the public are separate statutory rights according to the Copyright
Act.
Tariff 24 is designed to compensate authors, composers and publishers in Canada for the
communication of a musical work to the public by telecommunication, a right not covered
© CIPS, 2008.
*
Lawyer and trade-mark agent, Laurent Carrière, is a senior partner with LEGER ROBIC RICHARD,
L.L.P., a multidisciplinary firm of lawyers, and patent and trademark agents. Karine Jarry is an articling
student with the firm. Published in the February 2008 issue of World Copyright Law Report.
Publication 328.040.
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by reproduction rights agreements. The Copyright Board’s decision was based on the
interpretation that the transmission of a musical ringtone is the final step in a
communication to the public by telecommunication and thus is included in Section 3(1)(f)
of the Copyright Act. If this interpretation is ruled not to be valid, then Tariff 24 is not
permitted within the act and the board’s decision cannot be upheld.
Section 3(1)(f) reads, in part, as follows:
“3. (1) For the purposes of this act, “copyright”, in relation to a work, means the
sole right to produce or reproduce the work or any substantial part thereof in any
material form whatever, to perform 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
[…]
(f) in the case of any literary, dramatic, musical or artistic work, to communicate
the work to the public by telecommunication,
[…]
and to authorize any such acts.”
The act defines ‘musical work’ as “any work of music or musical composition, with or
without words, and includes any compilation thereof”. ‘Telecommunication’ is defined
as “any transmission of signs, signals, writing, images or sounds or intelligence of
any nature by wire, radio, visual, optical or other electromagnetic system”.
The appellants based their request for review on two alternative arguments: the first being
that ringtone transmissions are not communications, and second that they are not
communications to the public, thus making Tariff 24 inapplicable because it is not covered
by Section 3(1)(f). The appellants argued that a transmission of ringtones is not the same
as a communication, as defined in Section 3(1)(f), in that a transmission should be
interpreted as a communication only when it can be “heard or perceived by [the] recipient
simultaneously with or immediately upon the transmission”.
The court rejected this argument, stating that it gave a too narrow definition of the word
‘communication’. As stated by the court: “in the context of a wireless transmission, it is the
receipt of the transmission that completes the communication”.
The appellants alternatively argued that the transmission of ringtones was not a
communication to the public since the customers purchased and downloaded the
ringtones on a one-to-one basis. The appellants argued that, no matter how many
communications there were, the transmissions should be viewed as singular private
communications.
The court rejected this second argument by drawing a comparison with a television
transmission, which is considered to be a ‘public performance’ even though nobody might
be watching at the time of the transmission and it can be viewed in the privacy of the
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user’s home. Since it is “made available to a sufficiently large and diverse group of
people” simultaneously and is not made in a concealed or private way, it is considered a
public communication. Similarly, the ringtones being made available simultaneously to a
large and diverse group of people qualifies them to be considered as communications to
the public in that the transmission has a sufficient degree of openness.
Therefore, the Federal Court of Appeal upheld the Copyright Board’s decision to certify
Tariff 24, which imposes a second royalty for ringtones as communications to the public
of music works in accordance with Section 3(1)(f) of the Copyright Act.
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