476

Court File No.: T-2090-14;

T-269-15;
T-1085-15;
T-1862-15;
T-117-17;
T-132-17;
T-133-17;
T-134-17;
T-943-17
FEDERAL COURT
BETWEEN:
1395804 Ontario Ltd., operating as Blacklock's Reporter
Plaintiff
-and-

Attorney General of Canada

Defendant

Court File No.: T-897-15

BETWEEN:
1395804 Ontario Ltd., operating as Blacklock's Reporter
Plaintiff
-and-

Canadian Transportation Agency

Defendant

Court File No.: T-1726-15

BETWEEN:
1395804 Ontario Ltd., operating as Blacklock's Reporter
Plaintiff
-and-

Library of Parliament
Defendant

Court File No.: T-1228-17

BETWEEN:

1395804 Ontario Ltd., operating as Blacklock's Reporter

Plaintiff
-and-

VIA Rail Canada Inc.

Defendant

Blacklock's Written Representations

(Plaintiff's motion to amend)
 477

i nv~~~nG~n~

1. On December 6, 2017, the Attorney General of Canada ("AG") provided the Plaintiff
("Blacklock's"), with a summary of the parties November 23, 2017 case conference
which indicates that "no party is to file any motion until there has been a CMC to discuss
the issue/proposed motion".' A Direction was issued by the Court, accordingly.

2. On January 10, 2018, Blacklock's retained new counsel, MBM Intellectual Property Law
("M BM").2

3. MBM has participated in three case conferences since being counsel. During same,
MBM proposed and did circulate draft amended Statements of Claim to the Defendants.
The Defendants have refused to consent to the filing of the draft amended Statements of
Claim.3

4. This motion seeks to amend twelve Statements of Claim which amendments are all
substantially the same, including:
(i) changing the name of the Defendant from a government department (T-943-
17/NEB; T-1862-15/Parks Canada; T-134-17/FINTRAC) to the AG. Previous
counsel named the wrong party in error but the proposed amendment does not
cause any doubt as to the identity of the proper Defendants;
(ii) particulars of ownership of copyright by Blacklock's, either by Mr. Tom Korski,
author, being an employee, officer and/or director of Blacklock's, each of the
relevant authors assigning copyright to Blacklock's or in the alternative, as a
result of Mr. Korski's contribution of originality and expression to the asserted
works. The Plaintiff is not seeking to alter the capacity in which Blacklock's is
bringing the proceedings;
(iii) adding a new cause of action to assert circumvention of the Blacklock's
technological protection measures ("TPM") contrary to s.41.1(1)(a) of the
Copyright Act. The new cause of action arises out of substantially the same facts

1 Affidavit of Tom Korski sworn August 23, 2018 (Korski Affidavit), Ex "X" -Letter dated December 6, 2017
from AG to Court
Z Korski Affidavit, pars. 10
3 Korski Affidavit, Ex "Z' and "AA" —Letter dated May 30, 2018 and Letter dated July 19, 2018 from MBM
to Court
Page 2 of 30
 478

as already pleaded by Blacklock's in the actions. As such, TPM may be pursued

notwithstanding that the proposed amendments for certain of the actions
occurred outside the limitation period;
(iv) converting five actions (T-1862-15/Parks Canada; T-1085-15/Competition
Bureau; T-269/CIDA; T-134-17/FINTRAC; T-897-15/CTA) from simplified to
ordinary procedure because the possible damages for circumvention of the
Blacklock's TPM exceed $50,000; and
(v) in each of the actions involving the AG, adding an additional fact for punitive
damages, specifically that the Defendant's agent improperly notified authors of
Blacklock's works that they could withdraw evidence regarding Blacklock's
ownership of same.

5. If the amendments are granted, Blacklock's also seeks additional discovery in the three
actions (T-269-15/CIDA; T-1085-15/Competition Bureau; T-897-15/CTA) where written
discovery has occurred.

II. THE FACTS

NAMING CORRECT PARTY

6. The Plaintiff in each of the below actions mistakenly named a government department
and should have named the AG.
Schedule Federal Court File No. Defendant
B T-943-17 National Energy Board
C T-1862-15 Parks Canada
T-134-17 FINTRAC

COPYRIGHT OWNERSHIP

7. Each of the original Statements of Claim asserts that Blacklock's owns copyright in the
asserted works.

8. The draft amended Statements of Claim particularize the following:

(i) that since the incorporation of Blacklock's, Tom Korski, author, has been an

Page 3 of 30
 479

employee, director and officer of Blacklock's;4

(ii) But for Paul Delahanty, who passed away on June 28, 2015, each of the accredited
authors of Blacklock's articles (Kaven Baker-Voakes, Alex Binkley, Mark Bourrie, Dale
Smith, Justin Ling, Jason Unrau and Tom Korski) have executed confirmatory copyright
assignments in favor of Blacklock's. The said assignments are attached as a schedule to
the draft amended Statements of Claim; and
(iii) Mr. Korski made contributions of sufficient originality and expression to all
Blacklock's articles.

9. Paul Delahanty's name appears as author on a small portion of the Blacklock's articles.
Mr. Delahanty was a friend of Mr. Korski. Mr. Delahanty asked Mr. Korski if his name
could appear as author on some of the Blacklock's articles. However, Mr. Delahanty did
not write any Blacklock's articles. All of the articles which bear his name were written by
Mr. Korski.s

10. Each of Kaven Baker-Voakes, Alex Binkley, Mark Bourrie, Dale Smith, and Justin Ling
have executed freelance agreements which confirm that Blacklock's may edit their
submissions. Mr. Korski re-worked and edited each of the submissions of the authors
referenced in the preceding paragraphs.6

TECHNOLOGICAL PROTECTION MEASURES (TPM)

11. Blacklock's proposed amended Statements of Claim seek a declaration and damages
for circumvention of the Blacklock's TPM. The Blacklock's TPM is a password protected
paywall that controls access to the Blacklock's Locked Articles.'

12. The Defendants' activities circumvented the Blacklocks TPM, by:$

(i) sharing a unique subscriber password with someone who is not authorized to
have the unique subscriber password;
(ii) sharing a Locked Article accessed from a single user subscription to any party; or

° Korski Affidavit, pars. 3-5 and Ex "A-C"

5 Korski Affidavit, para.7
6 Korski Affidavit, para.8 and Ex "F"
Schedule A-L, Proposed Amended Statement of Claims, para. 1(i)(d), and 1(iii)(b)
8 Schedule A-L of the Notice of Motion, Proposed Amended Statement of Claims, para. 4B/5B

Page 4 of 30
 480

(ii) unauthorized persons) or entity(s) requesting and thereafter receiving a Locked

Article from anyone having access either directly or indirectly to the Locked
Article.

Limitation Period Not an Issue

13. Blacklock's only discovered circumvention of its TPM within the last three years, upon
receipt of Access to Information and Privacy ("ATIP") returns, in the following actions:9

Schedule File No. Defendant Limitation Period Not an Issue —

B T-943-17
C T-1862-15
T-134-17
L T-1726-15
National Energy Board
Parks Canada
FINTRAC
Library of Parliament
First ATIP returned on:
April 13, 2017
September 29, 2015
April 19, 2016
September 21, 2015

Limitation Period Exgired Due to Ongoinq Negotiation

14. The first ATIP return in Federal Court File No. T-1085 (Competition Bureau) was on
February 27, 2015.10 The limitation period expired during on-going negotiations between
the parties with respect to how the actions were to proceed.

15. On December 6, 2017, the AG confirmed that no party is to file any motion until there
has been a CMC to discuss the issue/proposed." A Direction was issued by the Court,
accordingly.

16. On February 6, 2018, the AG provided Blacklock's correspondence wherein the AG was
to propose dates for a meeting to discuss a potential reference of issues including TPM.
The meeting occurred on March 13, 2018, after the expiry of the limitation period in T-
1085. Unfortunately, the AG chose not to pursue the reference.12

9 Korski Affidavit, para.11; Schedules "B", "C", "I" and "L", Notice of Motion
to
Schedule "E", Notice of Motion
11
Korski Affidavit, Exhibit "X"
lz Korski
Affidavit, Exhibit "Y", "Z" and "AA"

Page 5 of 30
 481

No Limitation Period Issue Where ATIP Return Within Last Three Years Discloses
Circumvention of TPM

17. Blacklock's discovered new copyright infringement and new circumvention of its TPM
within the last three years upon receipt of ATIP returns, as follows:13
Schedule File No. Defendant Limitation Period Not an Issue —
ATIP returned on:
A T-117-17 Health Canada March 27, 2017
G T-133-17 Transport Canada October 15, 2015
K T-1228-17 Via Rail July 11, 2016

18. The draft amended Statements of Claim in each of T-117-17; T-133-17; and T-1228-17
clearly identify which works are the subject of copyright infringement and TPM
circumvention arising exclusively from the ATIP returns referenced in the preceding
paragraph.14

Notwithstanding the Aforementioned -Limitation Period Not an Issue where New Cause of
Action (TPM) Arises Out of Substantially the Same Facts as Previously Pleaded

19. The below chart provides a sampling of the facts of each of the original pleadings which
demonstrate that the new cause of action (TPM) arises out of substantially the same
facts as originally pleaded:'s

Schedule Federal Defendant TPM paras in Language

Court File original SoC
No.

1(a) Subscription based content

2 Subscription basis
Health
A T-117-17 3 Pay walled
Canada
24 Circumvented.. . pay walled
electronic news content

13 Schedules A, G and K, Notice of Motion

14 Schedules A, G and K, Notice of Motion
is Schedules A-L, Notice of Motion

Page 6 of 30
 482

34 Circumventing...annual
subscription
35(fl Circumvention of subscription
based lawful access
1(i) Password-protected content
2 Subscription based
3 Password-protected; purchasing a
password by annual subscription
20 Single password, shared the
password
21 Electronic subscription password
22 password sharing
25 Behind a paywall accessible only
National
by subscribers with a valid
B T-943-17 Energy
password
Board
26 Single password
27 Circumvented... pay walled
electronic news content
33 Circumventing the lawful purchase
of an institutional annual
subscription
34(c) Shared its individual password
34(fl Not permitted to share single-use
subscription password
2 Subscription basis
3 Pay walled; single use electronic
subscriptions
7 Single-use electronic subscription
Parks
C T-1862-15 15 Username and password were
Canada
shared; Blacklock's prohibits the
sharing of single use account
username and passwords
18 Login information...were shared

Page 7 of 30
 483

21 Circumventing
23 Circumvented...pay walled
electronic news content
26(a) Disclose login information
26(g) Circumvention of subscription
based lawful access of online
news content
1(a) Subscription based content
2 News on a subscription basis
3 Pay walled
9 Provided the login information;
Employment pay walled content
D T-132-17
Canada 11 Dissemination login information

17 Circumvented. . . pay walled

electronic news content
20 Sharing login information

2 Subscription based
3 Pay walled
6 Individual membership; One
subscription... per subscriber
10 Single-use account
Competition 14 Shared his Blacklock's password
E T-1085-15
Bureau 22 Access to the Plaintiff's material
circumvented... pay walled
electronic news content
23 Unauthorized access
24(a) Paywalled
24(fl Intentional circumvention

Canada 1(i) subscription-based content

F T-2090-14 Revenue 2 Subscription based

Agency 4 subscription-access only site

G T-133-17 Transport 1(i) Subscription based content

Page 8 of 30
 484

Canada 2 News on a subscription basis

3 Pay walled
25 Circumvented... pay walled
electronic news content
33 Circumventing the lawful purchase
of an institutional annual
subscription
34(g) Circumvention of subscription
based lawful access
1(i) Subscription-based content

2 on a subscription basis

3 paywalled;

6 shared his password;

Canadian
International
H T-269-15 12 three Peo P le had access
Development
Agency 16 who had access to the P's
material
19 Single use electronic subscription;
direct access to the Plaintiff's pay-
walled news content
20 circumvented... pay-walled news
content
1(i) Subscription based content
2 Subscription based
3 Pay walled

T-134-17 FINTRAC 22 Circumvented... pay walled

electronic news content
30 Circumventing the lawful purchase
of an institutional annual

Page 9 of 30
 485

subscription

31(b) Circumvention of subscription

based lawful access
1(i) Subscription based content
2 Subscription based
3 Pay walled
Canadian 14 Circumvented... pay walled
J T-897-15 Transport electronic news content
Agency
16(d) Circumvention of subscription
based lawful access of online
news content

1(i) Password-protected content

2 Subscription-based; password-
protected basis
3 Password-protected

5 Electronic password subscription

7 Password-protected content
15 Electronic password subscription
41 Password-protected subscriptions
K T-1228-17 Via Rail
44 Unauthorized... access of its
content
45 shared unique passwords
46 Password sharing Is not
permitted; a unique username and
password that is not to be shared
47 Each accounts password
50 Paywall accessible only by
subscribers with a valid password

Page 10 of 30
 486

51 One subscriber with a single

password
52 Circumvented...pay walled
electronic news content
58 Circumventing the lawful purchase
of an institutional annual
subscription
59(c) Shared its individual password

59(fl Not permitted to share a single-

use subscription password
2 Subscription based
3 Pay walled
26 Circumvention the lawful purchase
of an institutional annual
Library of
L T-1726-15 subscription
Parliament
28 Circumvented... pay walled
electronic news content
30 Circumvention of subscription
based lawful access

PROPER TO CLAIM PUNITIVE DAMAGES WHERE ATTEMPT TO SURPRESS EVIDENCE

Background

20. By Notice of Motion dated March 21, 2017, Blacklock's sought to have the parties
proceed to trial with action T-117-17 (Health Canada) and one other non-AG
Defendant.16

21. In response to the Blacklock's Notice of Motion dated March 21, 2017, by (Amended)
Notice of Motion dated May 23, 2017, the AG sought "the trial of certain issues in
common to all proceedings pursuant to Rule 107. Specifically: (a) whether 1395804
Ontario Ltd. has standing to bring these actions; and alternatively, (b) the quantum of its

16 Korski Affidavit, Exhibit "D" - Blacklock's Notice of Motion dated March 21, 2017

Page 11of 30
 487

damages assuming, without admitting, liability. In the alternative, an order lifting the stay
on all the actions against the AG."

22. In response to the AG Notice of Motion dated May 23, 2017, Blacklock's filed the
affidavit of Jennifer Jans sworn July 14, 2017 (Jans Affidavit). The Jans Affidavit
included as Exhibit "G" thereto six affidavits from various authors, including Dale Smith
confirming ownership of articles written by them belonging to Blacklock's.18

Email Correspondence Encouraging the Suppression of Evidence

23. On July 14, 2017 (11:49am), Mr. Kaufman, counsel for the AG, emailed Mr. Hameed,
former counsel for Blacklock's. Mr. Kaufman wrote in part:19

You have filed affidavits as an exhibit to an affidavit, thereby shielding them from
cross-examination. This is improper, especially given how contentious the
evidence is. Please confirm that you will either withdraw these affidavits or that
the affiants will be available for cross-examination before the motion is heard in
September. If iYs the latter, we should schedule it ASAP.

24. On July 17, 2017 (5:47 PM), Mr. Hameed wrote to each of the authors and copied Mr.
Kaufman. Mr. Hameed wrote in part:20

As witnesses, you are not represented by me as legal counsel...lf you are

unavailable on a date Mr. Kaufman selects, you are entitled to identify a date
when you are available...Although I am not counsel for each of you, if you have
any questions about procedure, the propriety of a request from legal counsel, or
wish to clarify your rights, please feel free to contact me or you may wish [to]
speak to independent counsel... I leave it to Mr. Kaufman to contact you directly if
he chooses to examine any or all of you and for this purpose place him on cc: on
this email.

" Korski Affidavit, Exhibit "E" -Attorney General Notice of Motion dated May 23, 2017
'a Korski Affidavit, Exhibit "F"- Affidavit of Jennifer Jans sworn July 14, 2017 and Exhibit G thereto.
19 Korski Affidavit, Exhibit "L"- Email from Alex Kaufman (Kaufman) to Yavar Hameed (Hameed) dated
July 14, 2017 (11:49 AM)
20 Korski Affidavit, Exhibit "M" -Email from Hameed to Kaufman dated July 17, 2017 (5:47 PM)
Page 12 of 30
 488

25. On July 19, 2017 (10:24 AM), following the Jans Affidavit and the aforementioned
emails, Mr. Kaufman wrote for the first time to each of the authors in issue. Mr. Kaufman
wrote in part:21

As you were no doubt aware, an affidavit filed in a Court proceeding is subject to

cross-examination. This is a mandatory requirement (to be available for cross-
examination) if the affidavit is to be used in the proceeding. Please advise if you
wish to withdraw the affidavit. If you do not, I would like to schedule cross-
examinations on September 7 and 8. . .

26. On July 21, 2017 (3:31 PM) Mr. Kaufman wrote to each of the authors in issue. Mr.
Kaufman wrote in part: Zz

Thank you to all who have replied to my email below. [referencing his July 19,
2017 email].

For those who have not, please advise... if you wish to withdraw your affidavit.
Unless we hear otherwise, we will assume that you are still willing to provide it
and to be cross-examination on it. We will send Notices of Examinations.. .

27. On July 26, 2017 (1:59PM), Mr. Hameed wrote to each of the authors and copied Mr.
Kaufman. Mr. Hameed wrote in part: Z3

. . .Based on Mr. Kaufman's correspondence with you, I understand that he has

repeatedly asked whether you choose to "withdraw the affidavit' you have
sworn. . . ) can indicate that your affidavit is a sworn statement and it has been
submitted to the Federal Court. If you agree with the statements contained in
your affidavit, you are under no obligation to withdraw, but -upon request —you
are to make yourself reasonably available for cross-examination on the
affidavit. . . Mr. Kaufman also submitted "notice of examination which will list the

zl
Korski Affidavit. Exhibit "N" -Email from Kaufman to authors dated July 19, 2017 (10:24 AM)
22 Korski Affidavit; Exhibit "O" -Email from Hameed to authors dated July 21, 2017 (1:59 PM)
z3
Korski Affidavit. Exhibit "P" -Email from Hameed to Kaufman dated July 26, 2017 (1:59 PM)

Page 13 of 30
 489

documents that you are re uired to bring".. .

28. On August 3, 2017 (2:26 PM), Ms. Sarah Sherhols, lawyer for the AG, wrote to Mr.
Smith, author, and copied Mr. Kaufman. Ms. Sherhols' email read: z4

As discussed, please find attached a direction to attend across-examination on

your affidavit on September 8, 2017 at 1:45pm.

29. On August 3, 2017 (2:41 PM), Mr. Smith wrote to Ms. Sherhols. Mr. Smith wrote in
part:ze

got the email, and can attend.. . is there a more focused list that you ask me to
produce?

30. On August 21, 2017 (11:53 AM), Ms. Sherhols wrote to Mr. Smith. Ms. Sherhols wrote in
part:zs

Please bring documents related to the second bullet point in the attached
direction to attend for the articles listed below.

31. On August 30, 2017 (4:52 PM), Mr. Smith wrote to Ms. Sherhols and copied Mr.
Kaufman. Mr. Smith wrote in part:27

Please be advised that after meeting from a lawyer friend who told me that
representation is advisable, I will be withdrawing my participation from cross-
examination on September 8th. I have asked for legal representation and will not
participate further until such time that it is provided, at which time I would
consider any future requests.

32. On August 30, 2017 (5:12 PM), Mr. Kaufman wrote to Mr. Smith. Mr. Kaufman wrote in

24 Korski Affidavit, Exhibit "Q" —Email from Ms. Sarah Sherhols (Sherhols) to Smith dated August 3, 2017
(2:26 PM) including Direction to Attend
zs Korski
Affidavit, Exhibit "R" —Email from Smith to Sherhols dated August 3, 2017 (2:41 PM)
Z6 Korski
Affidavit, Exhibit "S" —Email from Sherhols to Smith dated August 21, 2017 (11:53 AM)
27 Korski Affidavit, Exhibit "T" —Email from Smith to Sherhols dated August 30, 2017 (4:52 PM)

Page 14 of 30
 490

part:zs

You voluntarily chose to swear an affidavit in this proceeding...The law society

has an 1-800 number...you may call and get information about your rights and
obligations. I am sorry that this is an inconvenience ... but you have sworn an
affidavit and I have an obligation towards my client.

33. On August 31, 2017 (4:12 PM), Mr. Smith wrote to Mr. Kaufman. Mr. Smith's email
reads:29

While I understand that you have an obligation to your client, I also have an
obligation to protect myself. To clarify, i have asked Blacklock's to provide fees
for legal representation, and if they are provided I will be in communication and
not until then.

34. On August 31, 2017 (4:23 PM), Mr. Kaufman wrote to Mr. Smith. Mr. Kaufman's email
read: 3o

would still suggest you contact the law society's number and get a free consultation
because the Notice of Examination can't simply be disregarded. As I believe I mentioned
to you before you are always free to withdraw your affidavit in which case you cannot be
cross-examined on it. If you wish to participate in the proceeding as a witness, then
there is an obligation to submit to cross-examination.

Dale Smith Aware He Could be Cross-Examined

35. On June 5, 2017, Mr. Dale Smith, author, swore his affidavit.31 Mr. Smith executed his
affidavit voluntarily. Mr. Smith was aware that his affidavit would be filed with the
Federal Court for the purpose of responding to the AG's (Amended) Notice of Motion
dated May 23, 2017, to address 'whether 1395804 Ontario Ltd. has standing to bring

28 Korski Affidavit, Exhibit "U" —Email from Kaufman to Smith dated August 30, 2017 (5:12 PM)
29 Korski Affidavit, Exhibit "V" —Email from Smith to Kaufman dated August 31, 2017 (4:12 PM)
3o Korski
Affidavit, Exhibit "W" —Email from Kaufman to Smith dated August 31, 2017 (4:23 PM)
31 Korski Affidavit, Exhibit "F" -Affidavit of Jennifer Jans sworn July 14, 2017 and Exhibit G thereto.

Page 15 of 30
 491

these actions'.3z

36. Mr. Smith was fully aware that when he swore his affidavit on June 5, 2017 that he could
be cross-examined on his affidavit. Mr. Korski told him same. Moreover, On December
17, 2015, Mr. Smith was cross-examined by the AG in Federal Court File No. T-1391,
Blacklock's v. Canada (AG) without representation during his cross-examination. 33

April 5, 2018 — Blacklock's Becomes Aware of Correspondence Between AG and Mr. Smith

37. On April 5, 2018 Blacklock's was provided the email exchanges from August 2017
between the AG and Mr. Smith by Mr. Smith's counsel in Federal Court File No. T-1696-
17 (referenced hereinafter). Prior to April 5, 2018, Blacklock's was unaware of the said
August 2017 correspondence. 3a

38. On February 28, 2018, Blacklock's was refused production of the aforementioned
August 2017 email exchanges by the Department of Justice on the basis that they were
the subject of solicitor-client privilege. As such, Blacklock's is left to believe that the AG
is counsel for Mr. Smith.35 Respectfully, this potentially raises conflict issues.

Relationship Between Blacklock's and Dale Smith is Strained

39. The relationship between Blacklock's and Mr. Smith has become significantly strained
since Mr. Kaufman's email of July 19, 2017 (10:24 AM) wherein he invited Mr. Smith to
withdraw his affidavit. 3s

40. On October 13, 2017 Blacklock's commenced an action in the Superior Court against
Mr. Smith for a declaration of ownership of copyright of all articles published by
Blacklock's with a Smith by-line. The claim was filed because Mr. Smith, relying at least
in part on advice from Mr. Kaufman, purported to withdraw his affidavit regarding

3z
Korski Affidavit, para. 16
33
Korski Affidavit, Para. 16 and Exhibit "G"
3a
Korski Affidavit, para. 20 and 21
3s
Korski Affidavit, Exhibit "H"
36 Korski
Affidavit, para. 22

Page 16 of 30
 492

copyright ownership by Blacklock's knowing it had been filed in the Federal Court.37

41. Following the commencement of the Superior Court action, the AG complained that
Blacklock's wrongly brought the action in the Provincial Court without the AG's
participation knowing that the issue of Blacklock's standing is a live issue in all the
proceedings. In reply, on November 6, 2017, Blacklock's discontinued the Provincial
action and commenced the action in the Federal Court.38 The Federal Court action was
discontinued on April 10, ZO~ 8.39

42. Blacklock's is concerned that as a result of its strained relationship with Mr. Smith that it
will make its witness preparation (of Mr. Smith) for trial more difficult.ao

CONVERSION FROM SIMPLIFIED TO ORDINARY PROCEDURE

43. Each of the below actions were commenced as simplified procedure:

Schedule Federal Court File No. Defendant
C T-1862-15 Parks Canada
E T-1085-15 Competition Bureau
H T-269-15 Canadian International Development Agency
T-134-17 FINTRAC
J T-897-15 Canadian Transport Agency

ADDITIONAL DISCOVERY

44. Written discovery has occurred in the following actions:41

Schedule Federal Court File No. Defendant
H T-269-15 Canadian International Development Agency
E T-1085-15 Competition Bureau
J T-897-15 Canadian Transport Agency

37 Korski Affidavit, Exhibit "I" —Federal Court Statement of Claim T-1696-17, paras. 33-36
38 Korski Affidavit, Exhibit "I" and "J"
39 Korski Affidavit, Exhibit "L"
ao Korski Affidavit, para. 22
41 Korski Affidavit, pars. 12

Page 17 of 30
 493

III. ISSUES

45. Whether the amended Statements of Claim in the form attached as Schedules "A" to "L"
to this Motion be allowed;
46. Whether each of Federal Court File Nos. T-1862-15/Parks Canada; T-1085-
15/Competition Bureau; T-269/CIDA; T-134-17/FINTRAC; and T-897-15/CTA be
converted from simplified to ordinary procedure; and
47. Whether there shall be additional discovery in each of Federal Court File Nos. T-269-
15/CIDA; T-1085-15/Competition Bureau; and T-897-15/CTA.

IV. ARGUMENT

AMENDMENTS GENERALLY

48. Rules 75 to 79 of the Federal Court Rules (the "Rules") govern the amendments of
pleadings. These rules must be read in light of Rules 200 and 201.42

49. The Rules provide for a liberal approach to amendments. The facts pleaded in the
amendments are taken to be true.a3

50. A Plaintiff is entitled to rely upon Rule 75 to allow for amendments to a Statement of
Claim at any time for the purpose of making the pleading accord with the issues at the
hearing — to determine the real questions in controversy between the parties.aa

51. The general rule is that an amendment ought to be allowed under Rule 75 where it is in
the interest of justice to allow the amendment.45 It boils down to a consideration of
simple fairness, common sense and the interest that the courts have that justice be
done.46

4z Rule 75-79 and 200-201, Federal Court Rules, SOR/98-106. as S.C.2002, Blacklock's Book of
Authorities ("BBOA"), Tab 2
43
Savanna Energy Services Corp. v. Technicoil Corp., 2005 FC 842 at pars 14, BBOA Tab 15
as
Rule 75(2)(a), Federal Court Rules, SOR/98-106. as S.C.2002 BBOA Tab 2; Davydiuk v. Internet
Archive Canada (2016) FC 1313 at para. 20 BBOA Tab 6; Houle v. Canada [2001] 1 FC 102 at para. 15
and 37, BBOA Tab 9
4s
Abbvie Corp., v. Janssen Inc. (2014) FCA 242 at para. 3, BBOA Tab 4
as
Ibid at para 3; Richardson Int. Ltd. v. Mys Chikhacheva (The), 2002 FCA 97 at pars. 51., BBOA Tab 14

Page 18 of 30
 494

52. Only where the proposed amendment would result in an injustice to the other party not
capable of being compensated by costs should an amendment by refused by the Court.
A party seeking to find injustice and reject an amendment must meet the high standard
that it is plain and obvious that the amended claim must fail.47

53. It is not the role of motion judge/prothonotary to determine whether the amendment will
be successful at trial — "this is a matter for the trial judge to determine on the evidence
before him or her".'$

Rule 77

54. Rule 77 of the Rules allows an amendment under "rule 76 notwithstanding the expiration
of a relevant period of limitation that had not expired at the date of commencement of
the proceeding".49

55. The amendments being sought in each of the proceedings do not involve limitation
periods that would have expired at the date of commencement of each proceeding. so

i_mrs►l~tii

56. Rule 201 of the Rues allows for a new cause of action if the new cause of action arises
out of substantially the same facts as a cause of action in respect of which the party
seeking the amendment has already claimed relief in the action.51

57. Rule 201 of the Rules is only applicable where the new cause of action is outside a
limitation period. sz

47 Davydiuk v. Internet Archive Canada (2016) FC 1313 at Para. 41, BBOA Tab 6
48 Seanix Technology Inc. v. Synnex Canada Ltd. (2005) FC 243 (F.C.) at Para. 20, BBOA Tab17
49 Rule 77, Federal Court Rules, SOR/98-106. as S.C.2002, BBOA Tab 2
so
Schedules A- L, Notice of Motion
51 Rule 201, Federal Court Rules, SOR/98-106. as S.C.2002, BBOA Tab 2
5z
Seanix Technology Inc. v. Synnex Canada Ltd. (2005) FC 243 (F.C.) at para. 7, 8,12, 13, and 17,
BBOA Tab 17

Page 19 of 30
 495

NAMING CORRECT PARTY

58. Rule 76(a) of the Rules reads: With leave of the Court, an amendment may be made to
(a) correct the name of a party, if the Court is satisfied that the mistake sought to be
corrected was not such as to cause a reasonable doubt as to the identity of the party. s3

59. Changing the name of the Defendant from a government department (T-943-17/NEB; T-
1862-15/Parks Canada; T-134-17/FINTRAC) to the AG will not cause any doubt as to
the identity of the proper Defendant.

COPYRIGHT OWNERSHIP

60. Subsection 13(3) of the Copyright Act provides that where a work is created in the
course of employment, the work is owned by the employer unless there is an agreement
to the contrary. This principle is also applicable to officers and directors of the
corporation. sa

61. Where a Plaintiff seeks to amend a pleading to confirm copyright ownership by

referencing a confirmatory assignment which identifies the Plaintiff as owner of the
copyright to claim copyright infringement, the Court will allow the amendment in the
interest of justice to ensure the triable issue is before the Court. ss

62. Joint authorship will be established where an editor worked as a point laborer with a co-
design, 5s

53
Rule 76(a), Federal Court Rules, SOR/98-106. as S.C.2002, BBOA Tab 2
54 Section 13(3), Copyright Act, R.S.C., c. C-42 as am. BBOA Tab 1; Harmony Consulting Ltd. v. G.A.
Foss Transport Ltd. (2011) FC 340 at Para. 230 and 231, BBOA Tab 8
5s Sheridan Gymnasium Equipment Ltd. v. Gymnasium &Health Equipment Ltd. et al.
(2000) 9 C.P.R.
(4`h) (FCTD) at para 9, BBOA Tab 18
sb Neugebauer V. Labieniec (2009) FC 666 at para. 45, BBOA Tab 11

Page 20 of 30
 496

NEW CAUSE OF ACTION —TECHNOLOGICAL PROTECTION MEASURES

63. Section 41(a) of the Copyright Act, RSC 1985, c. C-42 defines a TPM as follows: 57
technological protection measure means any effective technology, device or
component that, in the ordinary course of its operation,
(a) controls access to a work, to a performer's performance fixed in a sound recording or
to a sound recording and whose use is authorized by the copyright owner.

64. The Blacklock's TPM is a password protected paywall that controls access to the
Blacklock's Locked Articles —and falls within the definition of s.41(a) of the Copyright
Act.58

65. Section 41(a) of the Copyright Act, RSC 1985, c. C-42 defines circumvent as follows:59
(a) in respect of a technological protection measure within the meaning of paragraph (a)
of the definition technological protection measure, to descramble a scrambled work
or decrypt an encrypted work or to otherwise avoid, bypass, remove, deactivate or
impair the technological protection measure, unless it is done with the authority of
the copyright owner;

66. The Defendants circumvented the Blacklock's TPM by removing, impairing, avoiding
and/or bypassing the Blacklock's TPM.so

Where No Limitation Period Missed Blacklock's Not Required to Establish New Cause of Action
Arises Out of Substantially the Same Facts

67. Section 43.1 of the Copyright Act reads as follows:

(1) Subject to subsection (2), a court may award a remedy for any act or omission that
has been done contrary to this Act only if

57 S.41(a), Copyright Act, RSC 1985, c. C-42, as am., BBOA Tab 1

58 Schedule A-L of the Notice of Motion, Proposed Amended Statement of Claims, Para. 4A/5A; Nintendo
of America Inc., v. Jeramie Douglas King and Go Cyber Shopping (2005) Ltd. (2017) FC 246 at para. 73,
BBOA Tab 12
59 S.41(a), Copyright Act, RSC 1985, c. C-42, as amended, BBOA Tab 1
60 Schedule A-L of the Notice of Motion, Proposed Amended Statement of Claims, pars. 4B/5B; Nintendo
of America Inc., v. Jeramie Douglas King and Go Cyber Shopping (2005) Ltd. (2017) FC 246 at pars. 82,
94, 112, BBOA Tab 12.
Page 21 of 30
 497

(a) the proceedings for the act or omission giving rise to a remedy are commenced
within three years after it occurred, in the case where the plaintiff knew, or could
reasonably have been expected to know, of the act or omission at the time it occurred;
or
(b) the proceedings for the act or omission giving rise to a remedy are commenced
within three years after the time when the plaintiff first knew of it, or could reasonably
have been expected to know of it, in the case where the plaintiff did not know, and could
not reasonably have been expected to know, of the act or omission at the time it
occurred.
(2) The court shall apply the limitation or prescription period set out in paragraph (1)(a)
or (b) only in respect of a party who pleads a limitation period.

68. Where an amendment being sought is within a limitation period, the moving party need
not establish that the amendments arise out of substantially the same facts as originally
pleaded.s'

69. Blacklock's does not need to establish that its proposed amendments arise out of the
substantially the same facts as originally pleaded in in the following actions:

Schedule File No. Defendant

B T-943-17 National Energy Board
C T-1862-15 Parks Canada
T-134-17 FINTRAC
L T-1726-15 Library of Parliament
E T-1085-15 Competition Bureau

Blacklock's Not Required to Establish New Cause of Action (TPM) Arising Out of Substantially
the Same Facts for Information Acquired from ATIP Return Within Last Three Years

70. Blacklock's discovered new copyright infringement and circumvention of its TPM within
the last three years upon receipt of the ATIP returns, as follows:

61 Seanix Technology Inc. v. Synnex Canada Ltd. (2005) FC 243 (F.C.) at para. 7, 8,12, 13, and 17,
BBOA Tab 17.
Page 22 of 30
 498

Schedule File No. Defendant Limitation Period Not an Issue —

ATIP returned on:
A T-117-17 Health Canada March 27, 2017
G T-133-17 Transport Canada October 15, 2015
K T-1228-17 Via Rail July 11, 2016

71. The draft amended Statements of Claim in each of T-117-17; T-133-17; and T-1228-17
clearly identify which works are the subject of copyright infringement and TPM
circumvention arising exclusively from the ATIP's referenced in the preceding
paragraph.62

Rule 201 — Technological Protection Measures Arises Out of Substantially the Same Facts as
Previously Pleaded

72. Notwithstanding that Rule 201 is only applicable where the new cause of action is
outside a limitation period, the proposed new cause of action (TPM) arises out of the
substantially the same facts as Blacklock's pleaded in all of the original claims. 63

Limitation Period Not an Issue Where New Cause of Action Arising Out of Substantially the
Same Facts

73. Rule 201 must be interpreted broadly and is not limited by Rule 76. Where the new
cause of action arises substantially out of the same facts as previously claimed, the new
cause of action may be pursued notwithstanding that the amendment occurred outside
the limitation period.sa

74. Where paragraphs sought to be added as amendments arise substantially out of the
same facts as alleged in the original Statement of Claim, it is irrelevant whether or not

6Z
Schedules A, G and K, Notice of Motion
s3
Seanix Technology Inc. v. Synnex Canada Ltd. (2005) FC 243 (F.C.) at para. 7, 8,12, 13, and 17,
BBOA Tab 17.
sa
Scottish &York Ins. Co. v. Canada (2000) CarswellNat 19 at pars. 60 and 68 (FCTD), BBOA Tab 16;
Seanix Technology Inc. v. Synnex Canada Ltd. (2005) FC 243 (F.C.), BBOA Tab 17; Francoeur v. R.
[1992] 2 F.C. (F.C.A.) at para. 8, BBOA Tab 7; Houle v. Canada [2001] 1 FC 102 at para. 31, BBOA Tab
9.

Page 23 of 30
 499

the amendments raise a new cause of action which is barred by a limitation period.ss

No Prejudice Even Where the Limitation Mav Have Run

75. There is no prejudice against a Defendant whose case may be more difficult to defend
after the amendment where the limitation period has run or where it may be exposed to
more liability. ss

IMPROPER TO SUPPRESS EVIDENCE

The Rules of Professional Conduct

76. Respectfully, Mr. Kaufman's repeated invitation that Mr. Smith was "always free to
withdraw [his] affidavit" is in contravention of the Rules of Professional Conduct. In
particular s'

Rule 5.1-2: When acting as an advocate, a lawyer shall not

(e) knowingly attempt to deceive a tribunal or influence the course of justice by offering
false evidence, misstating facts or law, presenting or relying upon a false or deceptive
affidavit, suppressing what ought to be disclosed, or otherwise assisting in any fraud,
crime, or illegal conduct,
(h) make suggestions to a witness recklessly or knowing them to be false;
(j) improperly dissuade a witness from giving evidence or advise a witness to be absent,

5.3-1: Subject to the rules on communication with a represented party set out in rules
7.2-4 to 7.2-8.2, a lawyer may seek information from any potential witness, whether
under subpoena or not, but the lawyer shall disclose the lawyer's interest and take care
not to subvert or suppress any evidence or procure the witness to stay out of the way.

s5 Hou/e v.
Canada [2001] 1 FC 102 at para. 38, BBOA Tab 9.
ss
Ibid., at pars. 40.
67 Law Society of Ontario, Rules of Professional Conduct, Rules 5.1-2 (e), (h) and (j) and 5.3-1, BBOA
Tab 3.

Page 24 of 30
 500

Withdrawal of an Affidavit Must be With Leave of the Court

77. Affidavits cannot be withdrawn just because the responding party and moving party
affiant say so. Affidavits on motions can only be withdrawn with leave of the Court.68

78. A key determining factor when a request for withdrawal is made (leave motion) is the
clear existence of prejudice to the party seeking to withdraw the affidavit. However, the
Court should not permit the withdrawal of an affidavit merely to prevent cross-
examination. s9

79. Blacklock's always intended to rely upon the affidavit of Dale Smith. It never indicated
otherwise. Regardless, even where the moving party declares that it does not wish to
rely on an affidavit will the Court simply allow for such affidavit to be withdrawn.70

Attorney General's Failure to Abide by the Federal Courts Rules

80. Mr. Kaufman was fully aware that the Direction to Attend served upon Mr. Smith on
August 3, 2017 compelled him to attend for cross-examination on September 8, 2017.
However, Mr. Kaufman chose to ignore the Direction to Attend and his own email of
August 30, 2017 (5:12 PM) wherein he specifically noted: "You voluntarily chose to
swear an affidavit in this proceeding and Mr. Hameed would have no doubt advised you
that this meant you could be cross-examined". Mr. Kaufman ignored Rule 97 which
provides remedies where a person fails to attend an oral examination but rather wrote on
August 31, 2017 (4:23 PM) that Mr. Smith was always free to withdraw his affidavit in
which case you cannot be cross-examined. Respectfully, that advice was incorrect."

68 Boehringer Ingelheim (Canada) Ltd. v. Pharmacia Canada Inc, 2003 FCA 151 at para. 3, BBOA Tab 5.
69 Law Society of Upper Canada v. Canada (Minister of Citizenship &Immigration) 2006 FC 1042 at para.
29, BBOA Tab 10.
70 Ominayak v. Lubicon Lake Indian Nation Election (Returning Officer) [2000] F.C.J. No. 247 at para. 26-
27, BBOA Tab 13.
71 Rule 97, Federal Court Rules, SOR/98-106. as S.C.2002, BBOA Tab 2.

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 501

Punitive Damages Generally

81. Punitive damages are awarded where misconduct offends the Court's sense of decency.
Punitive damages are intended to deter and punish the misconduct. The Court may be
influenced by whether the misconduct was deliberate (written advice), the motive
(withdrawal of evidence), covered up (refusal to produce correspondence asserting
solicitor client privilege under privacy legislation), awareness of the wrong (Federal
Courts Rules/Rules of Professional Conduct) and power imbalance (government v. small
business).'Z

82. Where there is argument that both the Federal Courts Rules and the Rules of
Professional Conduct have been breached, it is not plain and obvious that the proposed
amendment will fail (e.g. "The Defendant's agent improperly notified Alex Binkley, Kaven
Baker-Voakes, Dale Smith, Mark Bourrie and Justin Ling that they could withdraw
evidence regarding Blacklock's ownership of articles which they authored").

INTEREST OF JUSTICE

83. It is in the interest of justice to allow the proposed amended Statements of Claim. Trial
has not been set in any of the matters —there will be no delay. Moreover, the
amendments will facilitate the court's consideration of the true substance of the dispute —
circumvention of the Blacklock's TPM.

84. The proposed amendments merely prevent prejudice, expense and delay if the
Defendants alleged surprise at trial. To achieve this end, the amendments provide
particulars which explain the causes of action set out in the pleading.73 The amendments
provide a different approach to the same facts.74

CONVERSION FROM SIMPLIFIED ACTIONS TO ORDINARY ACTIONS

85. Blacklock's has pleaded that the Defendants' wrongful activities occurred for commercial

'Z Whiten v. Pilot Insurance Co., [2002] 1 SCR 595 at para. 36, 43, 113 and 114, BBOA Tab 19.
73 Houle v. Canada [2001] 1 FC 102 at para. 19, BBOA Tab 9.
74 Ibid., at pars. 24

Page 26 of 30
 502

purposes for media operations and monitoring by the Defendants.75 Blacklock's

appreciates that the Defendants have pleaded that the complained of activates occurred
for non-commercial purposes. However, this is a live issue for trial to be determined
based on the evidence before the court.

86. Section 38.1(1) of the Copyright Act provides for statutory damages for breach of
copyright. The statutory damages range from $100-$5000 (non-commercial) per work to
$500-$20,000 (commercial) per work.76 The Copyright Act does provide for
circumstances (e.g. good faith/bad faith; conduct of the parties; need to deter; and for
non-commercial purposes-proportionality) where the court may reduce the statutory
damages."

87. Statutory damages for circumvention of a TPM may include statutory damages for the
library of works behind the TPM.78 The Locked Articles subject to potential statutory
damages in each of the Blacklock's cases is in the 1000's.

88. Actual infringement of copyright is not necessary for an award of statutory damages for
TPM circumvention.79

89. Rule 292 provides that unless the Court orders otherwise, an action will proceed as a
simplified action where the amount claimed does not exceed $50,000.80

90. The simplified actions include, T-1862-15 (Parks Canada); T-1085-15 (Competition
Bureau); T-269-15 (Canadian International Development Agency); T-134-17 (FINTRAC);
and T-897-15 (Canadian Transport Agency).$' If the Court finds circumvention of the
Blacklock's TPM, the award of damages in each of the aforementioned cases could far
exceed $50,000 in damages.

75 Notice of Motion Schedule A-L, Proposed Amended Statement of Claims

76 S.38.1(1), Copyright Act, RSC 1985, c. C-42, as amended, BBOA Tab 1.
" S.38.1(2)-38(6), Copyright Act, RSC 1985, c. C-42, as amended, BBOA Tab 1.
78 Nintendo of America Inc., v. Jeramie Douglas King and Go Cyber Shopping (2005) Ltd. (2017) FC 246
at para. 130, 132, 138-141, BBOA Tab 12.
'9 Ibid., Para. 137
80 Rule 292, Federal Court Rules, SOR/98-106. as S.C.2002, BOA Tab 2.
a' Schedules C; E; H; I and J of the Notice of Motion, Proposed Amended Statement of Claims
Page 27 of 30
 503

ADDITIONAL DISCOVERY

91. An Order pursuant to Rule 235 of the Rules providing leave to Blacklock's to examine for
discovery each of the following Defendants:

Schedule Federal Court File No. Defendant

H T-269-15 Canadian International Development
Agency
E T-1085-15 Competition Bureau
J T-897-15 Canadian Transport Agency

92. Rule 235 provides that leave may be provided to permit discovery more than once.82

93. Where a pleading is amended after discovery to permit for a new cause of action,
common sense dictates that additional discovery will be permitted.

V. RELIEF SOUGHT

94. Blacklock's respectfully requests:

I. An Order granting leave to amend its Amended Statements of Claim in the form
attached as Schedules "A" to "L" to this Motion;
II. An Order declaring that each of Federal Court File Nos. T-1862-15/Parks Canada; T-
1085-15/Competition Bureau; T-269/CIDA; T-134-17/FINTRAC; and T-897-15/CTA be
converted from simplified to ordinary procedure;
III. An Order that there shall be additional discovery in each of Federal Court File Nos. T-
269-15/CIDA; T-1085-15/Competition Bureau; and T-897-15/CTA;
IV. Costs of this motion; and
V. Such further or other relief as counsel may advise and/or this Court may permit.

SZ
Rule 235, Federal Court Rules, SOR/98-106. as S.C.2002, BBOA Tab 2.

Page 28 of 30
 504

ALL OF WHICH IS RESPECTFULLY SUBMITTED

DATED AT Ottawa, Ontario, this 27th day of August, 2018.

In ellectual Property Law LLP

275 Slater Street, 14th Floor
Ottawa ON K1P 5H9

Scott Miller
Deborah Meltzer

Tel: 613-567-0762
Fax: 613-563-7671
smiller ,mbm.com
dmletzer(c~mbm.com

Solicitors for the Plaintiff

TO: THE ADMINISTRATOR

Federal Court Registry

Thomas D'Arcy McGee Building

90 Sparks Street, 5th floor
Ottawa ON K1A OH9

AND TO: DEPUTY ATTORNEY GENERAL OF CANADA

Nathalie G. Drouin

Per: Sarah Sherhols

Department of Justice
50 O'Connor Street, Suite 500
Ottawa ON K1A OH8
Tel: 613-670-6294/613-670-6287
Fax: 613-954-1920
Email: Sarah.SherholsCc~iustice.gc.ca

Solicitor for the Defendant (Attorney General

of Canada)

Page 29 of 30
 505

AND TO: THE LIBRARY OF PARLIAMENT

Per: Ariel Thomas

Fasken
1300-55 Metcalfe St.
Ottawa ON K1P 6L5
Tel: 613-696-6879
Fax: 613-230-6423
Email: athomas(a~fasken.com

AND TO: CANADIAN TRANSPORTATION AGENCY

Per: Allan Matte

Canadian Transportation Agency
19-15 Eddy Street
Gatineau QC K1A ON9
Tel: 819-994-2226
Fax: 819-953-9269
Email: Allan.Matte(a~otc-cta.gc.ca

AND TO: VIA RAIL

Per: Bob Sotiriadis

Robic, LLP
1001 Square-Victoria, Bloc E, 8th fl,
Montreal QC H2Z 2B7
Tel: 514-987-6242
Fax: 514-845-7874
Email: sotiriadis(a~robic.com

Page 30 of 30