Date: 20020426
Docket: T-1868-97
OTTAWA, Ontario, the 26th day of April, 2002
PRESENT: The Honourable Mr. Justice Rouleau
BETWEEN:
MARTIN BEAUDRY
and
JEAN-MARCEL RAYMOND
Plaintiffs
AND:
JEAN-JACQUES GOLDMAN,
SONY MUSIC ENTERTAINMENT (CANADA) INC.,
CÉLINE DION,
RENÉ ANGÉLIL
and
BEN KAYE
Co-defendants
AND:
SOCIETY FOR REPRODUCTION RIGHTS OF AUTHORS,
COMPOSERS AND PUBLISHERS IN CANADA,
SOCIETY OF COMPOSERS, AUTHORS AND
MUSIC PUBLISHERS OF CANADA
LA SOCIÉTÉ DES AUTEURS, COMPOSITEURS
ET ÉDITEURS DE MUSIQUE
and
LA SOCIÉTÉ POUR L'ADMINISTRATION DU DROIT
DE REPRODUCTION MÉCANIQUE DES AUTEURS,
COMPOSITEURS ÉDITEURS (SACEM / SDRM)
Mis-en-cause
ORDER
[1] The appeal is allowed and the objections raised by counsel for the co-defendants Goldman, Dion, Angélil, Kaye and Sony in regard to the requests for undertakings to disclose the said documents are upheld.
"P. Rouleau"
Judge
Certified true translation
Suzanne M. Gauthier, LL.L., Trad. a.
Date: 20020426
Docket: T-1868-97
Neutral Citation: 2002 FCT 462
BETWEEN:
MARTIN BEAUDRY
and
JEAN-MARCEL RAYMOND
Plaintiffs
AND:
JEAN-JACQUES GOLDMAN,
SONY MUSIC ENTERTAINMENT (CANADA) INC.,
CÉLINE DION,
RENÉ ANGÉLIL
and
BEN KAYE
Co-defendants
AND:
SOCIETY FOR REPRODUCTION RIGHTS OF AUTHORS,
COMPOSERS AND PUBLISHERS IN CANADA,
SOCIETY OF COMPOSERS, AUTHORS AND
MUSIC PUBLISHERS OF CANADA
LA SOCIÉTÉ DES AUTEURS, COMPOSITEURS
ET ÉDITEURS DE MUSIQUE
and
LA SOCIÉTÉ POUR L'ADMINISTRATION DU DROIT
DE REPRODUCTION MÉCANIQUE DES AUTEURS,
COMPOSITEURS ÉDITEURS (SACEM / SDRM)
Mis-en-cause
REASONS FOR ORDER
ROULEAU J.
[1] This is an appeal, based on section 51 of the Federal Court Rules, 1998, from an order dated May 10, 2001 rendered by Prothonotary Richard Morneau, dismissing some of the objections raised by counsel for the co-defendants and ordering the production of the following documents:
As to the defendant Angélil, the agreement between the defendants Dion and Sony Music Entertainment (Canada) Inc.;
As to the defendant Goldman, the agreement between the respective publishing companies of the defendant Goldman, J.R.G. Éditions Musicales-Caminair, and of the co-defendants Dion, Angélil and Kaye, C.R.B. Music Publishing;
As to the defendant Kaye, the statements in regard to the Société des Auteurs, Compositeurs et Éditeurs de Musique au Canada ("SOCAN") and the Société du Droit de Reproduction des Auteurs, Compositeurs et Éditeurs de Musique au Canada Inc. ("SODRAC") for all works produced on the album "D'Eux";
As to the defendant Sony, the agreements between the co-defendants Goldman and Sony in regard to the publication and production of the album "D'Eux", which reproduces the disputed work "Prière païenne".
[2] The co-defendants seek to obtain an order allowing this appeal and upholding the objections raised by counsel for the co-defendants Goldman, Dion, Angélil, Kaye and Sony in regard to requests for undertakings to disclose the said documents.
[3] In this litigation, the plaintiffs allege that the defendants infringed their copyright in the work "Tes lèvres mauves". The plaintiffs claim that a significant portion of the work "Tes lèvres mauves" created by the plaintiff Beaudry was replicated in the work "Prière païenne", which the defendants say was composed and written by the defendant Goldman.
[4] On March 29, 1999, Mr. Richard Morneau, Prothonotary, ordered for reference the questions of law and of fact in relation to the damages alleged by the plaintiffs and the quantum of the damages, pursuant to Rule 153 of the Federal Court Rules, 1998.
[5] On October 23, 2000, the defendants Goldman, Dion, Angélil and Kaye filed a motion for rulings on the 225 or so objections raised on the examinations for discovery of the plaintiffs held December 7 to 9, 1999. On January 19, 2001, when he rendered an order to have these objections decided, Prothonotary Morneau held that the questions pertaining to the access to and originality of the disputed works and the presence, content and degree of similarity of these works were fundamental to this litigation.
[6] It was in this context, then, that the defendants' examinations were held with the consent of the parties and their counsel. The information contained in the liner notes of the two albums on which the work "Prière païenne" was reproduced was the subject of questions by the plaintiffs' counsel, these liner notes having been produced by the plaintiffs in support of their statement of claim as exhibits P-10 and P-21. However, no question was asked or allowed concerning the content of the agreements and contracts between the defendants in regard to these two albums owing to objections raised by all the defendants. In fact, the only questions the defendants allowed to be asked were those that in their view could identify the persons who were parties to these agreements.
[7] Accordingly, on April 11, 2001 the plaintiffs filed a motion for rulings on the objections raised on the examinations for discovery of the defendants. On May 10, 2001, Prothonotary Morneau rendered a decision dismissing some of the objections raised by the co-defendants' counsel and ordering the production of the documents at the heart of this litigation. He was careful to specify that "[t]he purpose or function of the decision on the reference was not to separate from the question of copyright infringement aspects of the case which, although useful in relation to damages, might nevertheless have sufficient relevance to infringement to be authorized at this stage." He also indicated that the items he characterized as being fundamental to the litigation were relevant but without specifically finding that this was a comprehensive list or that it should apply to all the examinations to be held subsequently.
[8] On May 22 and September 27, 2001, respectively, the co-defendants Sony, Goldman, Dion, Angélil and Kaye filed a motion appealing the order of Prothonotary Morneau dated May 10, 2001.
[9] In this order, Prothonotary Morneau drew the following conclusions:
[11] These remarks by the Court in Reading & Bates apply here to the various agreements which the plaintiffs are seeking from the defendants, since the latter are numerous and their rights, powers and obligations under those agreements in respect of the disputed work are of interest to the plaintiffs in determining the participation of each defendant in the alleged infringement of their work. Accordingly, the agreements may assist the plaintiffs to advance their case.
[12] It is also worth noting that it is the confidentiality which essentially concerns the defendants in the production of these agreements. It appeared that for many of the points which these agreements might affect the defendants allowed the plaintiffs to ask a host of questions. However, when the time came to produce the agreements on undertaking, the barriers went up. This background suggests to the Court that the agreements are relevant at this stage but it is their confidentiality that creates a problem.
[13] As the Court sees the matter, this question of confidentiality could not be a fundamental aspect of the decision on the reference and cannot now prevent production of the agreements as such.
...
Sony Music Entertainment (Canada) Inc.
[22] Question 7, which requests production of an agreement, seems to the Court to be relevant in view of the background to the dispute as described above. Further, it can be produced by Mr. Luprano. It will therefore have to be produced within 15 days in accordance with Rule 152 by counsel for the plaintiffs.
...
RenéAngé lil
[26] The agreement sought by the only disputed question put to this witness seems to the Court relevant as to its nature and the fact that it could enable the plaintiffs to confirm many points they have already obtained through questions already asked. The witness was the manager of the defendant Dion and is in a position to produce the said agreement. It will therefore have to be produced within 15 days in accordance with Rule 152 by counsel for the plaintiffs.
...
Jean-Jacques Goldman
[28] Since in regard to this witness question No. 1 is included in question No. 2, the latter question needs consideration. Question No. 2, which involves producing a copy of a written agreement, if it is in writing, is relevant in view of the general remarks made above. It will therefore have to be produced within 15 days in accordance with Rule 152 by counsel for the plaintiffs.
[29] The same is true mutatis mutandis for the agreement covered by question 3.
...
Ben Kaye
[36] On questions 6 and 7 (and regardless of whether there is an objection to question 6), these relate to relevant documents, especially as the statements regarding SACEM have been produced. They will therefore have to be answered.
[Emphasis added]
[10] These are the conclusions the defendants are appealing in this proceeding.
[11] The major question raised in this appeal is whether the discretionary order of Prothonotary Morneau, requiring the production of the various documents that are the subject matter of the litigation, is patently wrong or affects issues that are vital to the final issue of the case, thus warranting the intervention of this Court.
[12] The defendants submit that Prothonotary Morneau clearly erred in the interpretation of the facts at issue and in the application of the applicable law in holding that the documents covered by paragraphs 26, 28, 29 and 36 of his order were relevant to this case, since these documents are in no way related to the submissions of fact and of law advanced by any of the parties in this proceeding. They cite Rules 240, 242 and 247 of the Federal Court Rules, 1998 in support of their argument.
[13] The plaintiffs, for their part, generally submit that the prothonotary's order in regard to the agreements and other documents it covers should be upheld in that his findings and reasons as to their relevance are consistent with the Rules of this Court and the applicable law, and that there is no indication in the order of any irregularity or patent or obvious error that would justify the Court's intervention in order to overrule or quash this order.
[14] In Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425, the Federal Court of Appeal ruled on the standard of review of a prothonotary's discretionary decision. Its conclusion is expressed at paragraph 95 of the decision:
Where such discretionary orders are clearly wrong in that the prothonotary has fallen into error of law (a concept in which I include a discretion based upon a wrong principle or upon a misapprehension of the facts), or where they raise questions vital to the final issue of the case, a judge ought to exercise his own discretion de novo.
[15] The decision at issue is one that, in my opinion, is obviously wrong in law, which means that this Court must exercise its own discretion by a hearing de novo. As the analysis set out below demonstrates, the Court cannot subscribe to the conclusions reached by the prothonotary. It is necessary to intervene, therefore.
[16] Before beginning my analysis, however, an explanation is in order. The plaintiffs note that in its written submissions, the co-defendant Sony appeals the prothonotary's order in respect to both the conclusions that concern it and the conclusions in the order that are rendered against the other co-defendants. For example, Sony asks that the Court uphold some objections raised by the other co-defendants to requests for production of documents to which it does not appear to be a party. Counsel for the plaintiffs asked me, therefore, to disregard these submissions when ruling on the issue of the production of the documents pertaining to the co-defendants Dion, Angélil, Goldman and Kaye. However, it appears from the transcript of the examinations of the defendants that not only did counsel for the co-defendants Dion, Angélil, Goldman and Kaye object to the production of these documents but counsel for the co-defendant Sony likewise objected, the latter clearly having an interest since it is a party to the litigation and to some of these documents and consequently its interests could be adversely affected. This argument is therefore without merit.
[17] The plaintiffs submit that the questions that were put to the defendants were not addressed to the facts admitted in the pleadings. This principle is confirmed, moreover, in Rules 240 and 242(b), which state that, in order to be answered, the questions asked on an examination must be relevant to any unadmitted allegation of fact in a pleading filed by the party being examined. The co-defendant Sony submits, for its part, that the three agreements and the questions concerning them were relevant to facts previously admitted in the pleadings. It cites in support of its submission some extracts from the plaintiffs' statement of claim containing allegations about the production, reproduction and marketing of the album "D'Eux" by the defendant Sony and the role of the defendant Goldman in the production of that album. It is worth reproducing these here, for ease of reference:
[Translation]
22. During 1995 SONY produced, reproduced or had reproduced and marketed, under the audiodigital cassette and compact disk (a.k.a. CD) configurations, a sound recording, a.k.a "album", entitled "D'Eux", incorporating some interpretations of musical works by DION, as is apparent from a sample CD of the said recording bearing catalogue number CK 80219, served on the Defendants and produced in support hereof as exhibit P-10.
22.1 By way of further detail, the album "D'Eux" was marketed by Sony in Quebec and in France on or about March 29, 1995, as is apparent from a document dated February 27, 1995, emanating either from Sony's media relations office or its radio promotion department, served on the Defendants and produced in support hereof as exhibit P-10A.
23. It appears from a reference in this regard to the bottom of the back cover of the CD (exhibit P-10, supra), that the said album is also distributed by Sony.
24. The liner notes of the album (exhibit P-10) indicate that the music and texts (words) of the musical works incorporated on the album "D'Eux" were all created by Goldman, with the exception however of the works entitled, respectively, "Je sais pas" and "Cherche encore", which were created by Goldman in collaboration with two other persons.
25. It also appears, at page 18 of the aforesaid liner notes, that the recordings of the musical works incorporated on the album were made during November and December 1994.
26. Page 18 of the aforesaid liner notes also bears the following reference in relation to the publishing rights for the musical works incorporated in the album: [Translation] Publications: JRG/CRB Music (SOCAN).
27. Further to the preceding paragraph, the Plaintiffs state:
27.1 in regard to the information "JRG", that it is in fact the corporate name under which Goldman carries on business, JRG Éditions musicales-Caminair (exhibit P-1, supra).
27.2 in regard to the information "CRB", that it is in fact the limited partnership Les Éditions Musicales CRB/CRB Music publishing, for which Dion, Angélil and Kaye are general partners [commandités] (exhibit P-3, supra).
28. All of the musical works incorporated in the album "D'Eux", supra, are interpreted by DION.
29. Among the musical works incorporated in the album "D'Eux" are the musical work entitled "Prière païenne", which appears as the 11th work on the said album, as is apparent on the back cover of the said album (exhibit P-10, supra).
30. The musical work "Prière païenne" was the subject matter of a filing by GOLDMAN with the SACEM on or about September 20, 1994.
...
47. As is apparent from a reference in this regard on the bottom of the back cover of the CD (exhibit P-21), the said album is manufactured and distributed by Sony.
48. As is likewise apparent from a reference in this regard to the back cover of the CD (exhibit P-21), the musical work "Prière païenne" is incorporated in the said album, in this case as the 12th musical work.
[18] The defendant Sony replied as follows to these allegations in its statement of defence of October 10, 1997:
22. It denies paragraph 22 as drafted, as the production of the album "D'Eux" began in September 1994, refers the Court to Exhibit P-10 and denies anything not in strict conformity therewith and refers the Court to what is hereinafter pleaded;
22.1 It admits subparagraph 22.1 of the Declaration;
23. It admits paragraph 23 of the Declaration;
24. It denies as drafted paragraph 24 of the Declaration, refers to Exhibit P-10, which states that the musical works incorporated on the album "D'Eux" were indeed created by the Defendant Jean-Jacques Goldman, and denies anything not in strict conformity therewith;
25. It denies as drafted paragraph 25 of the Declaration, refers to Exhibit P-10, which states that the recording of the musical works on the album indeed took place in November and December 1994, and denies anything not in strict conformity therewith;
26. It admits paragraph 26 of the Declaration;
27. It admits paragraph 27 and subparagraphs 27.1 and 27.2;
28. It denies as drafted paragraph 28 of the Declaration, adding that the musical works which appear on the album "D'Eux" are interpreted notably by the Defendants Dion and Goldman;
29. It admits paragraph 29 of the Declaration;
30. It has no knowledge of the allegations contained in paragraph 30 of the Declaration;
...
47. It admits paragraph 47 of the Declaration;
48. It admits paragraph 48 of the Declaration.
[19] Paragraphs 72 and 73 of the statement of defence of the defendant Sony also indicate the following elements:
72. Sony, CRB and Robert Goldman on behalf of the Defendant Goldman during the summer of 1994 entered into negotiations surrounding the creation of a collaboration, whereby the Defendant Goldman would provide the musical works for and produce an album for the Defendant Dion, the whole to be recorded by Sony for reproduction, marketing and distribution;
73. Over the next few months, this project became a reality and the album "D'Eux" was recorded and produced and eventually reproduced and marketed, including 12 musical works, of which 10 were written by defendant Goldman alone and 2 were co-written with third parties.
[20] In their reply to the defendant Sony's statement of defence, the plaintiffs made the following admissions:
[Translation]
12.1 In regard to sub-paragraph 22.1 of the statement of defence, they note the admissions of the co-Defendant Sony concerning the Plaintiffs' allegations contained in paragraph 22.1 of their statement of claim and, in regard to exhibit P-10A filed in support thereof.
13. They note the admission contained in paragraph 23 of the statement of defence.
14. They join issue with the allegations contained in paragraph 24 of the statement of defence, adding that exhibit P-10 (previously filed) clearly states that two musical works had been created by the co-Defendant Goldman, in collaboration with some third parties, as is indicated in exhibit P-10, and admitted by the co-Defendant Sony in paragraph 73 of its statement of defence.
16. They note the admissions contained in paragraphs 26 and 27 of the statement of defence.
16.1 Further, in regard to the admission contained in paragraph 27 of the said statement of defence, the Plaintiffs explain that it is contrary to the actual allegations of the co-Defendant Sony contained in paragraphs 4 and 10 of its statement of defence.
...
46. In regard to paragraph 72 of the statement of defence, the Plaintiffs:
46.1 note the admission of the co-Defendant Sony in relation to the fact that it is Sony which was to record some musical works, reproduce and market and distribute an album for the co-Defendant Dion;
46.2 note the admission contained in the said paragraph to the effect that some negotiations were initiated in the course of the summer of 1994;
46.3 as to the remainder, have no knowledge of the allegations contained in the said paragraph.
47. In regard to paragraph 73 of the statement of defence, the Plaintiffs:
47.1 note the admission contained in the said paragraph that two musical works incorporated in the album "D'Eux" were written by the co-Defendant Goldman, in collaboration with some third parties, and that it took Goldman, following the negotiations alleged by Sony in the said paragraph, a few months in which to create ten (10) works and produce the album.
47.2 have no knowledge of the remainder of the said paragraph.
[21] The defendant Sony submits that the fact it denies certain facts alleged in these paragraphs, for example in paragraph 24 of the plaintiffs' statement of claim, has no relationship to the substance of the acts and events that are included therein. Furthermore, these items are admitted through a combination of the allegations contained in the statements of defence filed by the co-defendants. Thus, it submits that some paragraphs of the statement of defence of the defendant Goldman contain replies to the plaintiffs' statement of claim while others constitute a further plea including a number of direct admissions concerning who is the author of the work "Prière païenne", its interpretation by the co-defendant Céline Dion and the subsequent recordings and marketing of the album. Moreover, the defendant Sony submits that exhibits D-5 and D-24 filed in support of the statement of defence of the defendant Goldman contain some important admissions and evidence concerning the persons who claim to hold the copyright in the work "Prière païenne", for they include the statements in regard to the SACEM for the work "Prière païenne" made by the defendant Goldman.
[22] Thus the defendant Sony submits that these exhibits clearly indicate the scope and proportion of the rights held by the defendants Goldman, Erick Benzi (the arranger), J.R.G. Éditions Musicales-Caminair and C.R.B. Music Publishing, the respective publishing companies of the defendants Goldman, Dion, Angélil and Kaye, and the distribution of the mechanical reproduction fees that SACEM is to pay to these entities and, in addition, they contain the signatures of the defendants Goldman and Kaye, acting in their capacity as representatives of JRG and CRB, and which form an integral part of the statements.
[23] From my reading of these pleadings in their entirety, it is clear to me that the respective rights of the defendants have been conceded to be true to what is said in the liner notes of the disputed albums, as indicated by the statements of defence filed by the defendants. The liner notes and the copyrights, publishing rights and mechanical reproduction rights are confirmed, moreover, by exhibits D-5 and D-24 filed in connection with the statement of defence of the defendant Goldman. Furthermore, the plaintiffs' reply to the defendant Goldman's statement of defence notes some admissions that it includes. Some paragraphs in the statement of defence of the co-defendants Dion, Angélil and Kaye also contain some replies to the plaintiffs' statement of claim, replies that have not been disputed by the way. In addition, the plaintiffs recognize the admissions made by the defendant Sony in their motion for rulings on the objections made by Sony's counsel during the examination for discovery of Mr. Luprano, as is indicated in the following paragraphs in the plaintiffs' submissions:
[Translation]
For its part, Sony admits reproducing and marketing the media (albums) incorporating the work in dispute "Prière païenne" as alleged in the Plaintiffs' statement of claim and that the said media are, at the time of institution of the proceedings in this case, still available on the market.
...
D. Similarly, Luprano states that Sony is the owner of rights in the albums "D'Eux" and "Live à Paris", a fact confirmed, moreover, by Sony's counsel: ... "1995 Sony Music Entertainment (Canada) Inc. is the copyright".
E. As to the rights in the musical works incorporated in the aforesaid albums, subject to an objection made by Sony's counsel, Luprano stated that he was aware that the Defendant Les Éditions Musicales CRB/CRB Music Publishment [sic] was the part owner of the copyright in the songs incorporated in the aforesaid albums, as was JRG Éditions Musicales-Caminair.
[24] The record shows as well that these same facts are clearly established by exhibit P-10 (the album "D'Eux") to which Sony referred in its statement of defence. Thus, in light of the aforesaid extracts, it can reasonably be concluded that the following facts have been admitted:
1. Exhibit P-10 indicates that the defendant Goldman composed the words and music for the work "Prière païenne", which is recorded therein and he is said to be the author of this work and the holder of the author's share of the copyright;
2. The defendants CRB and JRG hold the publisher's share of the copyrights in the work "Prière païenne";
3. The copyright owners granted the defendant Sony the right to record and reproduce a mechanical reproduction of the work "Prière païenne";
4. The work "Prière païenne" was interpreted by the defendant Dion and recorded by the co-defendant Sony;
5. The defendant Sony produced, reproduced, distributed and marketed the album "D'Eux" on which the work "Prière païenne" appears; and
6. The album "D'Eux" was produced by the defendant Goldman.
[25] Secondly, I note that the prothonotary held that these contractual agreements had to be disclosed to the plaintiffs for two reasons essentially: (1) these documents will allow the plaintiffs Beaudry and Raymond to determine the participation of each of the defendants in the alleged infringement of their work and thereby advance their case; (2) according to the prothonotary, it is rather because of the confidentiality of these works that the defendants are opposed to the disclosure of these documents, as is demonstrated by the fact that a host of questions were asked in regard to the content of these agreements.
[26] In so far as the first ground adopted by the prothonotary is concerned, the plaintiffs were alleging in support of their motion for rulings on the objections that they needed these documents for the following reasons:
1. In regard to the contract between the defendants Dion and Sony, "[Translation] in order to be able to specify the respective rights and obligations of the parties as they affect both the rights in the albums or masters incorporated therein and the copyrights in the musical works reproduced in these media, and in so far as the respective rights and obligations of the parties and their roles are concerned", and "[Translation] to avoid any surprise on these matters during the investigation and hearing on the merits of this case";
2. In regard to the agreements on the publishing and production of the album "D'Eux", in order to verify "[Translation] the scope of the rights, the identity of their holder, their respective roles and powers" and "[Translation] to avoid any surprise on these matters during the investigation and hearing on the merits of this case";
3. In regard to the statement concerning SOCAN and the SODRAC, in order to "[Translation] verify the rights in the works as stated, to know the identity of those with a beneficial interest therein, the dates of filing, and to verify that all of those with a beneficial interest therein are indeed those who were indicated by the Defendants".
[27] The plaintiffs note that the defendants confirmed the existence of written agreements and other documents and allowed some questions to be asked on the so-called marketing agreements, so they cannot now object to their disclosure and production, thereby trying to withdraw evidence the introduction of which they had accepted.
[28] But it appears from my reading of the transcripts of the defendants' examinations for discovery that the questions by the plaintiffs' counsel had to do not with the content of the agreements between the defendants but rather with the information referred to in the liner notes of the albums in question, when those liner notes were presented or referred to the said defendants at the time they were examined. Indeed, the proceedings and exhibits already produced by the respective parties, as well as the transcripts of the defendants' examinations, are completely silent in regard to the content of the agreements and other documents whose production was ordered.
[29] Thus it was clear that the questions allowed by the defendants' counsel were addressed not to the content but rather to the existence of these agreements and the terms and conditions that might be stipulated therein, as well as the identification of the persons who were parties thereto, as the liner notes of the disputed albums establish, these liner notes also being sufficient in my opinion to fulfill the purposes sought by the plaintiffs without their having to know the content of the agreements in question. There is no justifiable reason for the plaintiffs to have access to those agreements since it is obvious that they are not of such a nature as to contain some facts that could be used to determine whether the work "Prière païenne" was created by the defendant Goldman in breach of the plaintiffs' rights. Accordingly, the justifications given by the plaintiffs for obtaining a copy of these agreements are prima facie groundless, and Prothonotary Morneau misapprehended the facts in ordering their production.
[30] To determine the requisite degree of relevance for a party to be entitled during an examination for discovery to request the disclosure of a document from the person being examined, the Prothonotary cited in his order that is the subject of this appeal the decisions rendered by this Court in Sydney Steel Corp. v. Omiasalj (The), [1992] 2 F.C. 193 and Reading & Bates Contruction Co. v. Baker Energy Resources Corp. et al., (1988) 24 C.P.R. (3d) 66 (hereinafter Reading & Bates Contruction Co.). As it was clearly held in Reading & Bates Contruction Co., the document whose disclosure is requested must relate to the matters at issue as indicated in the pleadings filed by the parties. It is worth reproducing here what McNair said in the decision, supra, at p. 70:
The principle for determining what document properly relates to the matters in issue is that it must be one which might reasonably be supposed to contain information which may directly or indirectly enable the party requiring production to advance his own case or to damage the case of his adversary, or which might fairly lead him to a train of inquiry that could have either of these consequences ....
[31] In my opinion, the prothonotary clearly erred in applying this legal rule in the case at bar. It is obvious, when you adopt the six principles laid down in Reading & Bates Contruction Co. at pp. 70-72, that it is not enough that a document be directly or indirectly related in some way to the work "Prière païenne" for it to be relevant to this litigation. It must also be of a nature that would allow the party requesting its production to advance its own arguments or refute those of its adversary. But the documents requested in this case can in no way affect the positions of the parties in relation to the sole question that this Court will have to determine at this stage, namely, the alleged infringement of the plaintiffs' copyright by the defendants.
[32] In addition, the plaintiffs' arguments as to the relevance of these documents do not clearly fit within the framework of the issue before the Court at this stage as it was originally defined by the prothonotary in his order of January 19, 2001, i.e. that these documents do not pertain to access to the disputed works and the latters' originality or to the presence, content and degree of similarity of these works. Even admitting the possibility that the contractual relationships and documents relating to the scope of the respective defendants' rights may pertain to an issue other than that of the quantum of the damages, the plaintiffs still needed to demonstrate how the said agreements can help them confirm, refute or invalidate the co-defendants' arguments in regard to the alleged infringement of their copyright, or advance their case.
[33] But it is clear that no such evidence has been proffered by the plaintiffs. For example, it has not been demonstrated to my satisfaction that the questions asked in the course of the defendants' examinations, or the request for production of these agreements, have any relevance whatsoever to the questions about the circumstances surrounding the creation of the work "Prière païenne" by the defendant Goldman and the possibility that the defendants had access to the work "Tes lèvres mauves". Thus it was wrong to conclude that the agreements covered by the order now being appealed were relevant to the sole issue of the alleged infringement of the plaintiffs' copyright, since they failed to meet even the requirements of the authorities cited in the order.
[34] In all fairness to the prothonotary, it should be noted here that he apparently did not have the benefit of any clarifications by the respective counsel as to the content of these agreements; such information could have provided him with greater guidance in his determination of the relevance of these documents in the context of this case. Counsel for the co-defendant Sony explained in detail at the appeal hearing that, generally speaking, the sole purpose behind the type of agreement between the defendants Dion and Sony (the "Artist Agreement") and the album production and publishing agreements like those concerning the album "D'Eux" (the "Publishing Agreement") is to settle the monetary issues between the defendants. They cover remuneration, dividends, licences, mechanical reproduction rights, revenues for public performances, etc. There was no disagreement over these explanations among the parties.
[35] It appears from the allegations in the memoranda that had been filed by the plaintiffs in support of their motion for rulings on the objections raised on the co-defendants' examinations for discovery that the plaintiffs thought they needed to know the identity of all those with a beneficial interest, whether in the musical work or in the media, and their participation in the alleged infringement in order to be in a position to take the necessary steps and obtain a final judgment on the merits that would be enforceable against each of them, in order to name only a few and thus avoid a multiplicity of actions. But if the agreements in question were to be of any relevance whatsoever, such relevance could only stem from the issue of the assessment of the quantum of damages that the plaintiffs might be entitled to claim from the defendants once an infringement had been proved, as this issue came within the prohibition in Rule 247. Accordingly, Prothonotary Morneau erred in law in ordering the production of the three agreements for the purposes of determining "the participation of each defendant in the alleged infringement of [the plaintiffs'] work". This question could only be raised in the course of determining the quantum of the damages and profits or subsequently. However, it has no impact on the issue of the alleged infringement of copyright now before this Court.
[36] I note, moreover, that the statements in regard to the SACEM have been filed in the Court record since the filing of the work "Prière païenne" with that French agency was one of the facts used to establish at what date this work had been completed by the defendant Goldman. As to the SOCAN and SODRAC documents, the prothonotary indicated that he considered these documents relevant and then ordered their production. It appears that none of the counsel for the co-defendants actually objected to the production of the SOCAN and SODRAC statements, and counsel for Sony specifically stated that he did not object to their introduction, as is indicated in the transcript of the examination of the co-defendant Kaye at pp. 25-27. Indeed, a statement by counsel for the co-defendant Sony in the course of the examination for discovery of the co-defendant Kaye indicates that a distinction must be made between Sony Music Entertainment (Canada) Inc. and Sony A.T.V. Publishing, and that it is only in so far as it was a representative of one of these entities who was responsible for producing the statements from the SODRAC that counsel objected to their production in the Court record by the defendant Kaye.
[37] Now, there is nowhere - in the pleadings, the exhibits, the transcripts of the examinations, the arguments initially submitted by the co-defendants on the presentation of the motion for rulings on objections, or even in the prothonotary's order - any argument or justification that would support the claim that the statements produced from SOCAN and the SODRAC were relevant in establishing either the circumstances surrounding the marketing of the work in question or any other relevant evidence pertaining to the infringement of the plaintiffs' copyrights. The prothonotary had to examine each of these documents individually, as well as the reasons advanced in support of the request for disclosure of those documents, if he was to determine whether they are relevant. This he did not do.
[38] Accordingly, in the absence of any persuasive evidence to the contrary, the statements in regard to the Canadian agencies SOCAN and SODRAC seem to have been produced only in the context of the marketing of this work by the defendants, thus demonstrating totally different degrees of relevancy. Since the marketing of this work is related only to the issue of determining the assessment of the damages that the plaintiffs allegedly suffered, it falls under the Rule 247 prohibition, and the prothonotary erred in law in ordering the disclosure of these documents.
[39] The plaintiffs submit that a number of questions still remain in regard to not only the defendants' participation in the infringements, but also their involvement, their respective roles, the form of their participation and the precise identity of all those who may have contributed to such infringements, especially since it appears from the documents "[Translation] statements of musical works" filed with the French agency SACEM that entities other than the co-defendants are copyright holders by assignment or otherwise in the disputed work (the entities "EMI Music Publishing", "SMP Canada" and "Sony Publishing", which are not mentioned anywhere in the liner notes in exhibits P-10 and P-21). In view of all this, the plaintiffs submit they are entitled to the production and disclosure of these documents as well as some musical publishing contracts contemplated by the prothonotary's order which may well add certain particulars in relation to these matters.
[40] In my opinion, all of these questions, while relevant, can only be tackled after the conclusion of the action and a determination that the plaintiffs' copyrights have indeed been infringed. The plaintiffs may then obtain production of these agreements at the hearing on the merits in connection with the issue of the defendants' share of responsibility in the alleged copyright infringements in order to verify the statements in the media comprising the said work, the identity of all those holding a beneficial interest therein and the respective roles, powers, rights and obligations, and accordingly present all their submissions in this regard.
[41] The second reason cited by the prothonotary in support of his conclusions was based on what in his opinion was clearly apparent in the proceedings and the submissions by the defendants and the overriding source of their objections to disclosing and producing the agreements and other documents, namely, their claims as to the confidentiality of these materials. This confidentiality, he said, could not in itself preclude the production of the agreements, in his opinion. Yet the prothonotary could not accept the argument concerning the confidentiality of the agreements to the detriment of the strict principles laid down in Reading & Bates Construction Co. concerning their relevance to the question now in dispute. However, it should be explained that the co-defendants had cited this issue of confidentiality as basically their only reason for opposing the production of the agreements before the prothonotary, and he therefore did not have the benefit of hearing the other arguments of the parties that were raised before me on appeal. Whatever the case, the confidentiality of the agreements cannot stand as a reason, either, in this case.
[42] In my opinion, the production of these contracts is not only of no relevance to the question now before this Court for determination, that is, whether there was in fact an infringement of the plaintiffs' work by the defendants, but it could also do enormous harm to them, since the content of these agreements is confidential and private. Needless to say, sweeping questions in the nature of a "fishing expedition" and questions of no relevance to items that the prothonotary himself had specified after rendering his order on the referral were prohibited. In my opinion, the order of May 10, 2001 was such as to allow the plaintiffs to conduct a fishing expedition into the defendants' confidential and private commercial agreements, and thus were factually unfounded and resulted in some conclusions that had no foundation in law.
[43] Finally, the plaintiffs note that neither in its motion nor in its written submissions did Sony present any argument or appeal against the part of the order regarding the continuation of the examination of a representative of Sony apprised of the facts contained in Sony's statement of defence. Accordingly, pursuant to the request by counsel for the plaintiffs, I order the co-defendants to make themselves available for the continuation of the examination concerning the agreements and other documents covered by the prothonotary's order within 40 days from this judgment in accordance with the terms and conditions contained in that order.
[44] I suggested to counsel at the outcome of the hearing that the case should be specially managed by an arbitrator or neutral third party in order to accelerate the settlement of this litigation. The parties expressed their agreement, but explained that such an order by the assistant chief justice of this Court could have effect only after a final decision is rendered on the issue of the production of the agreements and other documents.
[45] For the aforesaid reasons, this appeal is allowed and the objections raised by counsel for the co-defendants Goldman, Dion, Angélil, Kaye and Sony regarding the requests for undertaking to disclose the said documents are upheld.
"P. Rouleau"
Judge
OTTAWA, Ontario
April 26, 2002
Certified true translation
Suzanne M. Gauthier, LL.L., Trad. a.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET NO: T-1868-97
STYLE:
MARTIN BEAUDRY and JEAN-MARCEL RAYMOND
Plaintiffs
AND:
JEAN-JACQUES GOLDMAN,
SONY MUSIC ENTERTAINMENT (CANADA) INC.,
CÉLINE DION, RENÉ ANGÉLIL and BEN KAYE
Joint and several defendants
AND:
SOCIETY FOR REPRODUCTION RIGHTS OF AUTHORS,
COMPOSERS AND PUBLISHERS IN CANADA (SODRAC) INC.,
SOCIETY OF COMPOSERS, AUTHORS AND
MUSIC PUBLISHERS OF CANADA (SOCAN),
LA SOCIÉTÉ DES AUTEURS, COMPOSITEURS ET ÉDITEURS DE MUSIQUE and
LA SOCIÉTÉ POUR L'ADMINISTRATION DU DROIT DE REPRODUCTION MÉCANIQUE DES AUTEURS, COMPOSITEURS ÉDITEURS (SACEM / SDRM)
Mis-en-cause
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: April 9, 2002
REASONS FOR ORDER OF ROULEAU J.
DATED: April 26, 2002
APPEARANCES:
| Éric P. Goyette |
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FOR THE PLAINTIFFS |
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| Paul-André Martel |
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FOR THE DEFENDANTS GOLDMAN, DION, ANGÉLIL |
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| AND KAYEDavid Platts Fred Headon |
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FOR THE DEFENDANT SONY MUSIC ENTERTAINMENT (CANADA) INC. |
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SOLICITORS OF RECORD:
| Tamaro, Goyette Montréal, Quebec |
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FOR THE PLAINTIFFS |
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| Dunton Rainville Montréal, Quebec |
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FOR THE DEFENDANTS GOLDMAN, DION, ANGÉLIL AND KAYE |
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| McCarthy Tétrault Montréal, Quebec |
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FOR THE DEFENDANT SONY MUSIC ENTERTAINMENT (CANADA) INC. |
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