In Tajdin and Jiwa v. Aga Khan, the Federal Court of Appeal dismissed the Appellants’ appeal of Federal Court’s decision in Aga Khan v. Tajdin and Jiwa following a summary judgment proceeding holding that the Appellants infringed the Plaintiff’s literary works known as Farmans and Talikas (collectively “Speeches”) reproduced in whole or in part in a book (the “Golden Edition”).
While the decision is correct on the facts, unfortunately it fails to correct and clarify the issue of burden of proof to establish consent in copyright infringement cases and evidentiary standards for summary judgment proceedings.
The Background
The Plaintiff is the Imam of the Shia Imami Ismaili Muslims and gives advice and guidance to followers on both religious and temporal matters by such Speeches. The Defendants admitted the plaintiff’s ownership over the Speeches. The primary issue for determination in the cross motions for summary judgment was consent. The Defendants alleged that the Plaintiff personally gave his consent to the publication of present and future Speeches at a religious event in Montreal in August 1992. Further, they alleged that the Plaintiff gave his implied consent to the Defendants, and to others, based on a reading of changes to the Ismaili Constitution, and through Speeches and interviews the Aga Khan has given over the years.
In December 2009, the Defendant Tajdin published the Speeches. The Plaintiff, through his representatives, and by two letters to the Defendant Tajdin communicated to Tajdin that he did not consent to the unauthorized publication and distribution of the Speeches. The Defendants maintained that these letters were a forgery.
Federal Court Proceedings
In April 2010, the Plaintiff commenced this action. Subsequently, the Plaintiff signed an affirmation pursuant before a notary public in Boston, Massachusetts that he had not consented to the publication of the Speeches and that he had authorized the action for copyright infringement against the Defendants.
In the cross motions for summary judgment, the letters and the affirmation by the Plaintiff were attached to the affidavits of Defendant Tajdin and deponents on behalf of the Plaintiff. In addition, an affidavit by a lawyer in Boston deposing that he had verified the identity of the Plaintiff and witnessed the signing of the affirmation by the Plaintiff was filed before the Court Justice Harrington of the Federal Court and granted summary judgment in favour of the Plaintiff and issued orders for injunction, delivery up of infringing copies and damages.
On the issue of consent, the Defendants stated that the Plaintiff had to establish lack of consent relying upon a previous Federal Court of Appeal decision in Albian Sands Energy Inc. v. Positive Safety Systems Inc. The Defendants alleged that at a religious ceremony in Montreal in 1992, a friend of one of the Defendants presented a book containing the Speeches to the Aga Khan and sought guidance. The Plaintiff had put his hand on the book but did not open it and told him to carry on what he was doing. The Federal Court held that given the ordinary meaning of the words used in the exchange between the Aga Khan and this individual, there could not be a finding of consent for the defendants’ endeavours. Furthermore, relying upon the decision in Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., even if consent were given at all, it could only be for that particular volume of Speeches in existence and not for future Speeches.
The Federal Court also rejected the implied consent argument by the Defendants that they were authorized to publish the Speeches because the Plaintiff had urged his followers to read the Speeches and the Institutions established under the Ismaili Constitution had failed to publish the Speeches.
The Defendants had previously complained that they were unable to cross-examine the Aga Khan on his solemn affirmation because it was not directly in the record. Rather, it was an exhibit to the affidavits of the Boston lawyer and notary public. However, when the Aga Khan attended at the examination for discovery requested by the Defendants, the Defendants did not ask proper questions relating to the issue of consent. The Court drew an adverse inference from the failure to ask these questions. Since the Court had ruled that the burden to establish consent was upon the defendants, the Court found that they had failed to discharge it.
Federal Court of Appeal
On appeal, the Defendants also argued that the Motions Court erred by admitting and relying upon “inadmissible hearsay evidence”. The Court of Appeal confirmed that the requirement for consent under the Copyright Act can be either express or implied. The Court of Appeal correctly stated that the inference of consent must come from the person holding the particular right alleged to be infringed (at para. 15).
With respect to the evidence on the issue of consent, the Court of Appeal held that, “Things might have been simpler if the solemn affirmation in the name of the Aga Khan had been filed on its own instead of being filed as an exhibit to the affidavits of two witnesses present when it was solemnly affirmed in Boston. However, here again, this is not a fatal flaw as suggested by Mr. Tajdin and Mr. Jiwa, particularly given the context in which this evidence was filed and the fact that Mr. Tajdin and Mr. Jiwa are still doubting its genuineness, even after they actually met the Aga Khan at the examination for discovery in Toronto.”
Nevertheless, the Federal Court of Appeal concluded that “…having concluded that there are no facts capable of constituting consent, one can only infer that the publication by Mr. Tajdin and Mr. Jiwa of the Golden Edition was done without the consent of the Aga Khan. To come to that conclusion, one need not accept, or even refer to, the affidavits filed in support of the Aga Khan’s motion which are said to contain only hearsay statements. In fact, in the very particular circumstances of this case, the inference of the absence of consent is the only possible conclusion. This is so whoever bears the ultimate burden of proving the absence of consent.” (at para. 22).
Unfortunately, the above statements confuse the legal burden of establishing consent (which is necessary element for an action for copyright infringement) with the evidentiary requirement for satisfying this requirement, especially in summary proceedings. Professor David Vaver has argued that it is not correct to place the burden of proof on a defendant (Consent or No Consent: The Burden of Proof in Intellectual Property Infringement Suits, (2011) 23 I.P.J. 147). In his view, a plaintiff who wants to show infringement of an intellectual property right has to say that the defendant is doing something only the plaintiff is entitled to do, and the plaintiff has not granted consent to the defendant to do that. This approach was followed by the Federal Court in Harmony Consulting Ltd. v. G.A. Foss Transport Ltd. where the Federal Court held that the plaintiff must not only prove that the defendant infringed or authorized infringement but must also prove lack of consent to the act that is alleged to be copyright infringement. The Harmony Consulting case is under appeal, and the Court of Appeal will have another opportunity to clarify the issue of burden of proof to establish consent in intellectual property infringement cases.
Implications
As noted above, the decision is undoubtedly correct on the facts. However, given the increased use of summary judgment proceedings in intellectual property cases, a clearer statement of the evidential requirements by the Court of Appeal would have been helpful. Persons dealing with intellectual property rights of others should ensure that the consent to use the intellectual property rights is clearly obtained. Similarly, holders of intellectual property rights should clearly communicate the scope of the consent and authorization granted with respect to the use and of their intellectual property rights.
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