Federal Court Of Canada Reverses Order Striking Toronto Regional Real Estate Board’s Copyright Claims

On November 15, 2021, the Federal Court of Canada (the Court) issued its decision in Toronto Regional Real Estate Board v IMS Incorporated, 2021 FC 1239, granting the motion of Toronto Regional Real Estate Board (TRREB) and setting aside in part the order of the Case Management Judge (CMJ) that struck TRREB’s copyright infringement claims without leave to amend.

TRREB brought a claim against IMS Incorporated (IMS) for copyright infringement, breach of unspecified proprietary rights, confidentiality, and TRREB’s Rules and Policies governing access, and breach of TRREB’s privacy rights under the Personal Information Protection and Electronic Documents Act (PIPEDA) relating to TRREB’s Multiple Listing Service system (MLS® System).

The CMJ struck TRREB’s statement of claim for lack of jurisdiction and abuse of the Court’s process, finding that it was plain and obvious that TRREB’s claims based on the Copyright Act and PIPEDA cannot succeed.  With respect to the copyright claims, the CMJ found that the Federal Court of Appeal (FCA) decision in Toronto Real Estate Board v Commissioner of Competition, 2017 FCA 236, held that copyright does not subsist in the MLS® System, and therefore it was an abuse of the Court’s process to relitigate the issue.  The copyright claims were struck without leave to amend.  With respect to PIPEDA, the CMJ held that the Court did not have jurisdiction because TRREB had not followed the statutory complaint process before engaging the Court.

TRREB appealed the CMJ’s decision with respect to the copyright claims.  The Court held that the CMJ committed a palpable and overriding error in relying on the FCA’s decision to strike out the copyright claims.  The Court stated that the record before the FCA was not before the CMJ and there was “no way to know if the evidentiary basis for the FCA’s determination would be the same in this action.”  The Court also noted that four judges in three actions have issued orders that were based on TRREB’s copyright in its MLS® System (as previously reported by the E-TIPS® newsletter here and here), and that these orders support TRREB’s position that its copyright infringement claims are not bound to fail.

Lastly, the Court held that even if TRREB were relitigating the same issue, the CMJ failed to consider whether relitigation would enhance the administration of justice or create unfairness in this case, and the doctrine of abuse of process should only be invoked in the clearest of cases.

The Court set aside the order in part, and granted TRREB leave to amend its copyright claims.

Summary By: Michelle Noonan