Date: 20190129

Dockets: 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
Toronto, Ontario, January 29, 2019

PRESENT: Prothonotary Martha Milczynski

BETWEEN:

1395804 ONTARIO LTD., OPERATING AS

BLACKLOCK'S REPORTER

Plaintiff

and

ATTORNEY GENERAL OF CANADA

Defendant

Docket: T-897-15

AND BETWEEN:

1395804 ONTARIO LTD., OPERATING AS

BLACKLOCK'S REPORTER

Plaintiff
 Page: 2

and

CANADIAN TRANSPORATION AGENCY

Defendant

Docket: T-1726-15

AND BETWEEN:

1395804 ONTARIO LTD., OPERATING AS

BLACKLOCK'S REPORTER

Plaintiff

and

LIBRARY OF PARLIAMENT

Defendant

Docket: T-1228-17

AND BETWEEN:

1395804 ONTARIO LTD., OPERATING AS

BLACKLOCK'S REPORTER

Plaintiff
 Page: 3

and

VIA RAIL CANADA INC.

Defendant

ORDER

UPON MOTION made by the Plaintiff, 1395804 Ontario Ltd., operating as Blacklock’s

Reporter, (“Blacklock’s”) for:

1. An Order pursuant to Rules 75-79 and 201 of the Federal Courts Rules (Rules),

permitting Blacklock’s to amend its Statements of Claim, as set out in the form attached

to the Motion Record, as follows:

Schedule Federal Court File No. Defendant

A T-117-17 Health Canada

B T-943-17 National Energy Board
C T-1862-15 Parks Canada
D T-132-17 Employment Canada
E T-1085-15 Competition Bureau
F T-2090-14 Canada Revenue Agency
G T-133-17 Transport Canada
H T-269-15 Canadian International Development
Agency
I T-134-17 FINTRAC
J T-897-15 Canadian Transport Agency
K T-1228-17 Via Rail
L T-1726-15 Library of Parliament

2. An Order declaring that each of the below actions are converted from simplified to

ordinary procedure:
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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
I T-134-17 FINTRAC
J T-897-15 Canadian Transport Agency

3. 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

4. Costs of the motion; and

5. Such further and other relief as to this Honourable Court may seem just.

AND UPON reviewing the motion material filed on the motion and hearing submissions

of counsel;

These actions have been commenced by the Plaintiff over a number of years for claims of

copyright infringement. The Plaintiff alleges that the Defendants have copied or distributed its

articles without consent and in breach of its copyright. One action (against the Department of

Finance, T-1391-14, judgment issued November 10, 2016) went to trial with the hope that it

could be dispositive of the other actions that were stayed for that purpose. This lead file was

dismissed with costs but was not, however, dispositive of the issues in the remaining cases. The
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Plaintiff has thus proceeded with the older claims and has commenced new actions. Of note

regarding the Department of Finance case for the purposes of the within motion is the

commentary by Justice Barnes that any claim for circumvention of technological protection

measures (TPMs) must be pleaded separate and apart of claims for copyright infringement

measures. The Plaintiff had raised the allegation at the trial but could not proceed with it being

determined as it had not been properly plead. The TPM and other proposed amendments to the

Statement of Claim are dealt with below.

With respect to items 2 and 3 above, the Court had the opportunity during the course of

the hearing to discuss the case management implications of granting or dismissing that relief. Of

particular concern is tying the hands of the Case Management Judge to direct the process to be

followed so as to ensure a just, expeditious, efficient and cost-effective manner of proceeding,

particularly having regard to the number of actions that have been commenced and are being

case managed together. As was discussed, some of the actions may be grouped and tried at the

same.

I am therefore satisfied that whatever amount of damages is being claimed in any particular

file, ought not automatically determine the procedure to be followed. All or part of the Federal

Courts Rules’ procedure for simplified actions can be of use in these actions to advance the

proceeding, including at trial, In some other instances or in different stages of the action, the

ordinary process for actions may be more appropriate. Some combination may be fashioned –

for example, written interrogatories may be exchanged, followed up with more limited focused

oral examination for discovery. At trial, some evidence in chief may be adduced by way of

affidavit, with the affiant present for cross-examination. Flexibility is key. Accordingly, with
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respect to items 2 and 3 of the notice of motion, that part of the motion will be dismissed with

the direction that the parties will propose and discuss the timetable and procedure with the Case

Management Judge.

I. Circumvention of Technological Protection Measures

With respect to the proposed pleadings amendments themselves, the initial/original

claims concerned allegations of copyright infringement through the various Defendants and/or

their employee(s) sharing articles that are on the Blacklock’s website/news service. The new

cause of action sought to be added relates to the Defendants’ access to the work and their alleged

circumvention of technological protection measures (TPMs). Infringement of copyright is an

offence under section 27 of the Copyright Act, and circumvention of TPMs is an offence under

section 41 of that Act. Each cause of action must be separately and clearly pleaded in a

statement of claim.

The limitation period is set out in the Copyright Act as follows:

43.1 (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

(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.

The restriction in section 43.1(2) referred to above states:

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(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.

With respect to the within motion and pleadings, where the proposed TPM amendment is

opposed (it is not opposed in some cases), the Defendant(s) submit that the above three year

limitation period to claim for the circumvention of TPMs has expired. The test whether or not

that is the case is discoverability – when the Plaintiff knew or reasonably ought to have known of

its potential claim.

In the case of the Library of Parliament, Blacklock’s alleges that an employee, Gilles

Villeneuve provided a copy of an article to a journalist. Blacklock’s requested a meeting with

the Library on September 22, 2013 to discuss the terms and conditions of use of a license and

met with Mr. Villeveuve on September 30, 2013. Blacklock’s then submitted its Access to

Information request to the journalist’s employer (the CBC) on June 28, 2015 and on September

21, 2015 learned that the article had been shared by the Library with the journalist. The within

motion to amend the Statement of Claim to include the TPM claim was filed on August 27,

2018. The Library submits that Blacklock’s knew or should have known of its potential claim in

September 2013 and certainly knew as of June 28, 2015 when it submitted its Access to

Information Request. Thus, the three year limitation period expired in September 2016 or at the

latest, June 28, 2018 – before Blacklock’s filed its Amended Statement of Claim on August 27,

2018.

In the case of VIA Rail Canada (VIA), Blacklock’s has pleaded that it received two

responses to its Access to Information Requests – the first on December 10, 2014 and the second

on July 11, 2016. It pleads in the proposed Amended Statement of Claim that it became aware of
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VIA’s wrongful actions, including the alleged circumvention of the TPMs on those dates. VIA

thus submits that the limitation period for any claims relating to TPMs arising out of the first

ATI response expired on December 10, 2017, and that Blacklock’s must be limited to its

allegations of copyright infringement for the first date but can claim copyright infringement and

circumvention of TPMs arising out of the second request. VIA does not oppose amendments

related to that second ATI response.

With respect to the Canadian Transportation Agency (CTA), the additional allegations of

circumvention of TPMs are also sought to be added. The CTA submits that the limitation period

with respect to this new cause of action against it has expired as Blacklock’s received the ATI

response on May 20, 2014, meaning that the limitation period expired on May 20, 2017.

With respect to the actions commenced against the Attorney General of Canada (AG and

AG files), they relate to various federal entities (Health Canada, National Energy Board, Parks

Canada, Employment Canada, Competition Bureau, Canada Revenue Agency, Transport

Canada, Canadian International Development Agency and FINTRAC). The AG acknowledges

that for certain actions (T-943-17 – National Energy Board and T-134-17 - FINTRAC), the

Plaintiff is within the limitation period and does not oppose the amendments relating to the TPM

claims. Regarding actions where three years have passed since the Plaintiff made its ATI request

and received the response (T-2090-14, T-269-15, T-1085-15, T-132-17) and in T-1862-15 where

the Plaintiff has admitted that as of July 2, 2014 it knew that Parks Canada had a Blacklock’s

Reporter Level subscription, the AG submits that the limitation period has expired and in those

files the proposed TPM amendments are entirely out of time.

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With respect to two files (T-117-17 – Health Canada and T-133-17 Transport Canada),

the AG submits that the Plaintiff is out of time for some, but not all amendments, depending

upon when Blacklock’s received its ATI response. As set out in the chart at paragraph 65 of its

written representations, of the first three claimed incidents, the limitation for two expired in 2017

(May 12, 2017 and December 14, 2017) and one in August 2018. The last claimed incident is a

proposed new claim/amendment and within the limitation period. For Transport Canada,

Blacklock’s has pled that it received two responses to ATI requests – the first on August 22,

2014 and the second on October 15, 2015. Those are the dates that are alleged to be the dates

when the Blacklock’s became aware of the Transport Canada’s wrongful actions, including the

alleged circumvention of TPMs. Thus the AG submits that the limitation period for any claims

arising out of the first ATI response expired on August 2017 but that the Plaintiff is within the

limitation period for the second response, but opposes the amendments on other grounds.

Whether any of the amendments relating to TPMs should be allowed on this motion must

not be determined in a manner that would usurp a trial on the merits. Pursuant to Rule 75 of the

Federal Courts Rules and the jurisprudence thereunder, it is well established that amendments to

pleadings should be permitted at any time if it assists the parties and the Court to identify or

clarify the issues that are properly in dispute, provide a framework for discoveries and trial and

generally to do justice as between the parties, considering whether any prejudice to one is

compensable in costs to the other. A factor to consider also is whether the proposed amendment

would survive a motion to strike if it had been in the pleading at first instance – whether it is

“plain and obvious” that it cannot succeed.

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The test on a motion to amend pleadings is thus not an enormously onerous one but it is

one to be applied diligently. There is an important “gate-keeper” function that the Court hearing

the motion must fulfill to ensure the parties’ and judicial resources are not wasted on claims that

cannot be sustained. The Court is entitled to and indeed must take into account facts that give

rise or do not give rise to a sustainable cause of action. For the within motion, whether or not it is

clear or plain and obvious that a limitation period has expired and is time-barred– or whether in

the circumstances of that case, as Blacklock’s argues, the responses to the ATI requests are not in

and of themselves determinative of the issue of whether a limitation period has expired cannot be

determined on this motion. The matter requires that the limitation period defence be pleaded in

the statements of defence (ss.43.1(2) of the Copyright Act) and its determination is dependent

upon evidence relating to when Blacklock’s knew or reasonably ought to have known that its

TPM was being or had been circumvented. This issue cannot be determined at this juncture, but

may with evidence on a motion for summary judgment, or on a full record at trial.

Accordingly, I am satisfied that amendments relating to TPMs must be allowed. The new

cause of action – the circumvention of TPMs – does arise out of substantially the same facts as

the claim for copyright infringement. The Defendants may plead in response that the limitation

period has passed on the grounds that 3 years have passed since the Plaintiff received the

response to its ATI request or on other grounds.

With respect to prejudice arising to the Defendants in permitting these amendments, I note in

that regard that the Plaintiff was well aware of its TPM rights in T-1391-14, the Department of

Finance case, as it sought to make the claim but only made the allegation at trial without the

cause of action having set out in its pleadings. It thus knew before the trial commenced in the
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fall of 2016 that it wished to assert the TPM claim and at the trial knew it would need to be

expressly pleaded. Even with the change in counsel and ongoing discussions about resolving

some actions and moving others forward, there has been some delay that should be taken into

account in assessing costs.

A. Housekeeping Amendments and Particulars relating to Ownership of Copyright

This category of proposed amendments deal with changes to the style of cause in some

files, and appear also to have been resolved to some extent at the hearing of the motion. The

FINTRAC and National Energy Board (T-134-17 and T-943-17 respectively) shall remain

named Defendants and The Attorney General of Canada shall be named in place of Parks Canada

in T-1862-15.

With respect to amendments clarifying Blacklock’s allegations and claim for copyright

infringement and TPM circumvention, these propose to add particulars regarding ownership of

copyright, activities for a commercial purpose and assignment of copyright to the Plaintiff from

authors. These amendments will assist the parties and the Court to identify the real areas of

controversy and issues in dispute under the Copyright Act between the parties, Blacklock’s

standing and remedy. They too will be allowed.

B. Claim for Punitive Damages – Allegations against DOJ Counsel

The Plaintiff seeks to add claims for punitive damages based upon allegations against

previous Department of Justice counsel representing the Attorney General of Canada in these

actions (Mr. Alex Kaufman). The allegations relate to actions taken in respect of a motion
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brought by previous counsel for Blacklock’s (Mr. Yavar Hameed), affidavits prepared on behalf

of Blacklock’s in support of the motion, and plans to cross-examine the affiants. Blacklock’s

seeks to allege that Mr. Kaufman tampered and suppressed evidence by asking the affiants

whether they would make themselves available for cross-examination, or whether they would be

withdrawing their affidavits.

The issue of cross-examining these affiants arose because the affidavits that were

included in the motion record were not filed on their own but were appended as exhibits to the

affidavit of Mr. Hameed’s assistant, thereby shielding them from cross-examination. Following

discussion, whether this was improper and whether the affidavits should be struck, it was agreed

that these affiants could be cross-examined. There was a question, however, whether any or all of

them would be willing to be subject to cross-examination. Mr. Kaufman was advised by Mr.

Hameed that he did not represent the affiants and that Mr. Kaufman could contact them directly.

Mr. Kaufman did so, inquiring of the affiants whether they were prepared to be cross-examined

or whether on consent, the affiant wished to withdraw their affidavit. He directed them to the

Law Society of Ontario where they could get legal assistance. One of the affiants sought

independent legal advice and subsequently requested to withdraw his affidavit. There was no

objection from Mr. Hameed.

None of what transpired gives rise even to the semblance of misconduct that would

warrant punitive damages, or to any cause of action. I am satisfied that it is plain and obvious

and without any doubt that this claim would necessarily fail. Those amendments shall not be

allowed.
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THIS COURT ORDERS that:

1. The motion is granted in part, the amendments proposed pursuant to items A and B in the

reasons above are granted, without prejudice to the Defendants to bring a motion for

summary.

2. The motion is dismissed in respect of the proposed amendments as described pursuant to

item C in the reasons above.

3. In the event the parties cannot agree on costs of the motion, they may file written

submissions no longer than 3 pages in length within 20 days of the date of this Order.

4. The parties shall, within 15 days of the date of this Order, consult with one another and

submit: (i) an update as to the status of each of the actions; (ii) a proposed timetable to

complete the remaining steps in each action, including whether any actions may be

grouped together for the purposes of trial; and (iii) dates and times of mutual availability

for a case management teleconference in the event the Case Management Judge requires

such teleconference.

“Martha Milczynski”
Prothonotary