Date: 199906225
Docket: T-633-92
BETWEEN:
SOCIETY OF COMPOSERS, AUTHORS AND
MUSIC PUBLISHERS OF CANADA
Plaintiff
- and -
LANDMARK CINEMAS OF CANADA LTD.
Defendant
REASONS FOR ORDER
ARONOVITCH P.:
| [1] The plaintiff brings a motion to compel answers to questions refused during the examination for discovery of the defendant"s representative Brian McIntosh. |
| [2] The plaintiff, the Society of Composers, Authors and Music Publishers of Canada ("SOCAN") is the only performing rights society in Canada which is authorized under the Copyright Act to grant licences and collect fees or royalties for the public performance in Canada, of works within its large repertoire of music. The fees to be paid under licence from SOCAN are set by tariffs published in The Canada Gazette. The applicable tariff in this instance is Tariff 6 which deals with the licensing of establishments exhibiting motion pictures. |
| [3] In its statement of claim, the plaintiff alleges that the defendant, Landmark Cinemas of Canada Ltd. ("Landmark") which operates motion picture theatres including drive-in theatres, has presented SOCAN"s works to the public as part of the soundtracks of films shown at all of the establishments it operates in breach of SOCAN"s copyright. SOCAN also alleges the unauthorized performance of musical works prior to and following the exhibition of films. The infringements are from 1991 and alleged to be continuing and resulting in further infringements, Landmark allegedly having operated and continuing to operate without a SOCAN licence or the payment of performance rights fees. |
| [4] The defendant denies any infringement, denies the plaintiff"s copyright and states that it is authorized to present the performance of the musical works in question by the distributors and producers, who own the motion pictures including the soundtracks and thus have authority to licence and permit the defendant to perform them. The defendant also argues that at least for a portion of 1991, it was in possession of a licence which was later improperly cancelled by the plaintiff. |
| [5] In its statement of claim as amended, the plaintiff sets out all of the theatres operated by Landmark and known to the plaintiff including some thirty-five (35) theatres in four western provinces and the Yukon. The plaintiff also provides in its pleading some six (6) pages of examples of musical works from its repertoire played in connection with films shown by the defendant setting out the name of the musical work, the film in connection with which it was played, the date of performances of the work, and the theatre or place of performances of the allegedly infringing works. All of the instances provided are for the year 1991. As to music played prior to and following the exhibition of films, the plaintiff provides no particulars or instances of infringement rather it simply states that the particulars of those musical works are not known to the plaintiff but are known to the defendant. |
| [6] The defendant"s representative, Mr. Brian McIntosh was examined on April 7th , 1994 in respect of the defendant"s statement of defence and refused to answer the following questions: |
| |
1- Provide a complete list of: |
|
| a) all cinemas/drive-ins owned and/or operated by Landmark Cinemas of Canada Ltd.; |
| b) showing the following information for each cinema/drive-in: |
| ii) seating capacity/maximum car capacity; and |
| c) for each cinema/drive-in, an indication of any changes in this information since January 1, 1991. |
| 2- Identify (name and address) the owners of each cinema/drive-in operated by Landmark Cinemas of Canada Ltd. |
| 3- For each cinema/drive-in operated by the Defendant, provide a break-down of all revenues for each year, showing separately the revenues from admission fees and the revenues from concession sales. |
| 4- For each cinema/drive-in operated by the Defendant provide: |
| a) a complete list of all movie titles exhibited; |
| b) the number of times such movies were exhibited; and |
| c) the dates of the exhibitions |
since January, 1999.
| 5- Provide for each motion picture exhibited by Landmark since January 1, 1991, the name, address and telephone number of the distributor (and contact person) who provided the motion picture to Landmark. |
- - In regard to each motion picture exhibited by Landmark since January 1, 1991, provide copies of all written agreements or any other letter agreements or other written items between Landmark and the distributor of the motion picture.
| 7- In regard to each motion picture exhibited by Landmark since January 1, 1991, provide copies of all documentation purporting to grant all rights, or specifically, music performance rights to Landmark. |
| 8- In regard to each motion picture exhibited by Landmark since January 1, 1991, inquire and advise as to whether or not the issue of music performing rights is ever addressed between Landmark representatives and motion picture distributors when they discuss the acquisitions of motion pictures and whether or not a distributor has ever stated that the authorization to Landmark to exhibit the motion picture includes the right to publicly perform the music contained in it. |
| [7] The defendant objects to answering questions on the following grounds. In reference to question number 1: Landmark argues that the issue is not one of relevancy to unadmitted facts but rather a "fishing expedition" in order to illicit information presently outside the knowledge of the plaintiff with the design of attempting to establish a further cause of action for further complaint. The second ground of objection is that the question is too broad and goes far beyond the locations and dates particularized and itemized in the statement of claim and therefore not relevant to those particulars. |
| [8] The same objections apply to questions 2 and 4. More specifically in reference to question number 2, the defendant argues that the identity of the owners of the theatres operated by Landmark is not relevant and therefore not compellable. |
| [9] Having objected to the relevance of question 3 in its submissions, and later having chosen not to seek an order pursuant to Rule 107, the defendant, at the hearing of the motion accepted that the question was indeed relevant in respect of the year 1991 but not thereafter. |
| [10] In reference to questions 5 to 8, the defendant having provided answers in connection with items or dates particularized in the statement of claim, refused any further information again, on the basis that it ought not to be compelled to answer regarding matters not particularized in the statement of claim as these questions are in the nature of a "fishing expedition" and are intended to give rise to a new cause of action. |
| [11] The purpose of discovery as well as the prevailing trend toward broadening the scope of discovery is summarized as follows: |
"...The purpose of discovery, whether oral or by production of documents, is to obtain admissions to facilitate proof of the matters in issue between the parties. The prevailing trend today favours broadening the avenues of fair and full disclosure to enable the party to advance his own case or to damage the case of his adversary . Discovery can serve to bring the issues more clearly into focus, thus avoiding unnecessary proof and additional costs at trial Discovery can also provide a very useful tool for purposes of cross-examination...."1. (emphasis added)
| [12] An individual attending on discovery has the obligation to answer, to the best of their knowledge information and belief, any question that is relevant to any unadmitted allegation of fact. The test being relevance, it finds its expression in the following statement regarding the production of documents now captured in Rule 222(2) of the Federal Court Rules, 1998. |
"...It seems to me that every document relates to the matters in question in the action, which not only would be evidence upon any issue, but also which, it is reasonable to suppose, contains information which may - not which must - either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary. I have put in the words "either directly or indirectly" because, as it seems to me, a document can properly be said to contain information which may enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary, if it is a document which may fairly lead him to a train of inquiry, which may have either of these two consequences: The question upon a summons for a further affidavit is whether the party issuing it can ..."2.
| [13] Having said that, there is a clear prohibition not to use discovery by way of a "fishing expedition". Here is a classic statement of the prohibition from Somers v. Kinsbury (1923) 54 O.L.R. 166 at 170: |
| |
"...an examining party has no right to ask questions for the purpose of finding out something of which he knows nothing now and which may enable him to formulate a case which is not in truth the subject matter of the suit..." (emphasis added). |
|
| Clearly the prejudice which is sought to be avoided in the context of allegations of infringement is that a plaintiff who knows nothing of instances of infringement, if allowed unrestricted discovery, may use it to establish a cause of action and make out a case which the plaintiff does not otherwise have and of which the plaintiff is otherwise unaware. |
|
| [14] Turning now to the questions at issue, I find that part of question 1 regarding theatres owned as opposed to operated by the defendant and all of question 2 regarding the owners of the theatres operated by the defendant need not be answered as these are neither relevant nor particularized. The defendant having been sued in their capacity as theatre operators only, need not provide instances of theatres they own. As to the owners of the theatres, they are not parties to these proceedings and I am not satisfied, in any case, that the owners would have knowledge that is relevant in that it would serve to advance the plaintiff"s case as instituted. |
|
| [15] As to the remaining questions, namely the greater part of question 1 and questions 3 to 8, the issue is essentially as to whether a party is limited on discovery to ask the questions or demand documents regarding only the infringement particularized in the statement of claim and in the case of a continuing breach, to the year in respect of which particulars were provided. I conclude that parties are not so limited and may compel answers and documents regarding instances of the same type of infringement as are in suit and have been particularized.3 |
|
| [16] Thus in, GEO Vann Inc., a statement of claim which set out the details of the type of infringement was sufficient to allow for the production of documents relating to another instance "of the same type". As well, in CSI Manufacturing and Distribution Inc., Titebaum J., had to consider alleged infringement in the context of the manufacture ans sale of a certain model of vehicle remote starter which was particularized in the statement of claim. Production was then requested and questions sough to be asked on discovery regarding a number of newer and more sophisticated models which the defendant had begun to manufacture subsequent to the commencement of the action. The questions were allowed on the basis that the new models were "not substantially different" from the model particularized in the statement of claim. |
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| [17] Thus in, the present instance, while for example questions regarding the" before" and "after" music, without anything more, may well be prohibited, I am satisfied that the questions at issue namely, the better part of question 1 and questions 3 to 8, do not constitute a "fishing expedition". |
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| [18] Thus, questions 1 and 4 must be answered as they seek to elicit information which is relevant to the infringement in suit, are within the knowledge of the defendant and refer to the same type, or further instances, of what the plaintiff has particularized in its statement of claim in respect of the year 1991. It follows that the answers to questions 3 and 5 to 8 which are relevant and compellable for 1991 are also compellable for the period following. Indeed to deny the plaintiff the information it seeks under these circumstances, and in the context of an alleged ongoing breach would place an impossible burden on the plaintiff given the span of its inventory of musical works. It would also lead to a plethora of actions and potentially endless litigation the plaintiff being forced to commence new proceedings in respect of each new instance discovered.4 |
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| Future steps in the proceeding |
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| [19] Further to the Orders of Blais J., dated February 25, 1999 as varied by Lutfy J. April 11, 1999 and having heard the submissions of the parties in that regard, subsequent steps in this proceeding are set out in the order which will issue in accordance with these reasons. |
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| [20] As success is divided costs are in the cause. |
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1 Reading & Bates Construction Co. v. Baker Energy Resources Corp. (1988), 24 C.P.R. (3d) 66 at 70.
2 Foseco Trading A.G. v. Canadian Ferro Hot Metal Specialties, Ltd. (1991), 36 C.P.R. (3d) 35 at pps. 39-40 and GEO Vann Inc. v. N.L. Industries, Inc. (1985), 4 C.P.R. (3d) 19 (F.C.T.D).
3 GEO Vann Inc. supra and CSI Manufacturing and Distribution Inc. et al. v. Astroflex Inc., (1993), 52 C.P.R. (3d483 (F.C.T.D.).
4 CIS supra and Congoleum-Nairn Inc. et al. v. Armstrong Cork Canada Ltd. et al. (1974), 19 C.P.R. (2d) 66 (F.C.T.D.)