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A-306-74
Société pour l'administration du Droit de Repro duction Mécanique des auteurs, compositeurs et éditeurs (S.D.R.M.) (Plaintiff) (Appellant)
v.
Trans World Record Corp. (Defendant) (Respondent)
Court of Appeal, Jackett C.J., Pratte J. and Hyde D.J.—Montreal, November 5 and 6, 1975.
Copyright Practice — Appeal against refusal to order
delivery into Court of materials in dispute pending outcome of proceedings — Federal Court Rule invoked to give special
effect to s. 21 of Copyright Act Appeal dismissed without costs because of defendant's responsibility for unnecessary
work Copyright Act, R.S.C. 1970, c. C-30, s. 21 -- Federal Court Rule 470(1).
Appellant claims copyright in certain musical works and sought an order in the Trial Division for delivery into Court of records, tapes, recordings and matrices of these works pending the outcome of the trial. Appellant claims ownership of these articles by virtue of section 21 of the Copyright Act, but sought to have them seized under Rule 470(1) of the Federal Court.
Held, the appeal is dismissed. As in the case of an interlocu tory injunction, the Trial Judge must consider the balance of convenience and Rule 470(1) cannot be invoked to give special effect to section 21 of the Copyright Act. No costs will be awarded in view of the fact that the respondent caused unneces sary work to be done by challenging the Court's jurisdiction to hear this action, which question could not be decided at this stage of the proceedings.
APPEAL. COUNSEL:
Serge Tremblay and R. Reynolds for appellant.
David M. Bernstein and Y. A. G. Hynna for respondent.
SOLICITORS:
Martineau, Walker, Allison, Beaulieu, MacKell & Clermont, Montreal, for appellant.
Bernstein, Feifer, Beaupré & Savoyan, Mon- treal, and Gowling & Henderson, Ottawa, for respondent.
The following is the English version of the reasons for judgment of the Court delivered orally by
PRATTE J.: Appellant claims to hold copyrights on a number of musical works. It brought an action against respondent accusing it of having illegally manufactured records and magnetic tapes reproducing these works. At the commencement of the proceedings it made a motion requesting that these records and tapes made by respondent, and the matrices which were used to manufacture them, be seized before judgment and remain in the custody of the Court until final judgment is ren dered in the action which it brought against respondent. Appellant claims that this property which it requested be seized belongs to it under section 21 of the Copyright Act'. This motion was dismissed in the Trial Division, and it is this decision which is being appealed here.
Appellant's motion was filed under Rule 470(1), which reads as follows:
Rule 470. (1) Before or after the commencement of an action, the Court may, on the application of any party, make an order for the detention, custody or preservation of any property that is, or is to be, the subject-matter of the action, or as to which any question may arise therein, and any such application shall be supported by an affidavit establishing the facts that render necessary the detention, custody or preservation of such prop erty and shall be made by motion upon notice to all other parties.
Counsel for the appellant maintained that the motion was also made under the Code of Civil Procedure of the Province of Quebec. This misun derstanding must be dispelled at the outset. In the cases mentioned in Rule 5 the Court may deter mine the procedure to be followed by analogy to the procedure in force in a province; however, this is not a case of the type contemplated by Rule 5, since there is no gap in the Rules of the Court concerning this matter. There is therefore no reason to refer to the provisions of the Code of Civil Procedure, or to the decisions interpreting them.
Counsel for the appellant maintained that the Trial Judge was in error in deciding this motion by taking into consideration an affidavit filed by respondent in support of other proceedings. It is
' R.S.C. 1970, c. C-30.
not necessary to comment on this argument. It seems clear to the Court that in order to reach a decision in this case the Trial Judge should first have considered the chances for success of the action brought by appellant; if he concluded there was a reasonable doubt that this action would succeed, the Judge should then have considered the balance of convenience (see as to this the passage in the third edition of Halsbury's cited by Cartwright C.J. in Lido Industrial Products Ltd. v. Melnor Manufacturing [ 1968] S.C.R. 769 at 771). If we approach the problem in this way by considering only the evidence submitted by appel lant and without taking into account the affidavit to which, according to appellant, the Trial Judge should not have referred, it seems to us that appel lant's motion should have been dismissed. It should be borne in mind that Rule 470, which is in this respect similar to the Rules dealing with interlocu tory injunctions, is a provision the sole purpose of which is to maintain the status quo by ensuring the preservation of property that is the subject- matter of an action. This Rule may not be used to give a special effect to section 21 of the Copyright Act, as appellant would like to do.
For these reasons the appeal will be dismissed. It will, however, be dismissed without costs because it seems (see the judgment of Addy J. at page 365 of the appeal record) that solely as the result of a mistake by counsel for the respondent, a large part of the parties' factums and probably of the pre paratory work for the hearing was devoted to discussion on the jurisdiction of the Court in this matter, which was a pointless discussion since it is clear that this question cannot be raised at this stage of the proceedings.
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