Toronto Regional Real Estate Board v. IMS Incorporated, 2021 FC 1239

On November 15, 2021, the Federal Court of Canada (the “FC”) handed down a decision granting a motion to partly set aside an order of the Case Management Judge (the “CMJ”) which rejected several copyright infringement claims brought by the Toronto Regional Real Estate Board (“TRREB”), Canada’s largest real estate Boards against IMS Incorporated (“IMS”), a communications contracting company that provides services to major telecommunications providers.

The FC found in favour of TRREB with respect to the copyright claims, holding that the CMJ committed a palpable and overriding error in relying on a previous Federal Court of Appeal (the “FCA”) decision to strike out the copyright claims.

Background

TRREB, a not-for-profit trade association that acts on behalf of more than 56,000 members in the Greater Toronto Area, operates a Multiple Listing Service database (the “MLS database”) that collects and distributes data on properties and listings among its members.

For several years TRREB has pursued legal action against companies it alleged have infringed its rights by accessing the MLS database, claiming various declarations under the Copyright Act and the Personal Information Protection and Electronic Documents Act (the “PIPEDA”). Recently, in other attempts to control access to and use of the MLS database, TRREB was involved in litigation that came before the Supreme Court of Canada, whereby TRREB was found to have abused its dominant position under the Competition Act by restricting the manner in which its members could use and disseminate information from the MLS database.

In this case, lawyers representing TRREB requested a declaration that IMS’ actions breached TRREB’s copyrights in the MLS database, further unspecified proprietary rights owned by TRREB, confidentiality as per the rules and policies governing access to the MLS database, and certain provisions of PIPEDA. TRREB sought various injunctions, mandatory orders, an accounting of profits, and damages.

Before the CMJ, TRREB’s statement of claim was struck without leave to amend for lack of jurisdiction and abuse of court process. The CMJ relied on the FCA’s decision in Toronto Real Estate Board v Commissioner of Competition, where it was held that the data in the MLS database was not entitled to copyright protection. The CMJ held that it was plain and obvious that TRREB’s claims could not succeed and that it would be an abuse of process to relitigate the issue. With respect to PIPEDA, the CMJ concluded that the court did not have jurisdiction and TRREB did not properly follow the preliminary statutory complaint process.

Analysis

TRREB appealed the CMJ’s decision but only in respect of the copyright claims, arguing that the CMJ erred in its application of the Federal Court Rules (the “Rules”) and that the CMJ failed to recognize that the onus of demonstrating whether TRREB’s copyright claims were an abuse of the court’s process was on IMS [16-17].

Abuse of Process

Deciding in TRREB’s favour, the FC agreed that the CMJ had made a palpable and overriding error by failing to take the facts pleaded in the statement of claim to be true for the purposes of the Rules [26]. More specifically, the FC reasoned that the CMJ ought not to have relied on the FCA’s decision and by extension the argument that TRREB was relitigating the same issue [36]. The information before the FCA was not the same information before the CMJ. As such, the FC argued that the CMJ should not assume that the evidence grounding the FCA’s determination would be the same as that the CMJ was privy to.

The FC further found that the CMJ failed to consider whether relitigating the issue would enhance the administration of justice or create unfairness. The doctrine of abuse of process is a discretionary tool and should only be invoked in the “clearest cases” [42]. The FC therefore found that the finding that the issue should not be relitigated was made without even assessing whether the doctrine of abuse of process should be invoked in this case.

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

Commentary

This decision highlights the case management judge’s obligation to consider the evidentiary record before it. Though reference can be made to the case law to support conclusions, the court should not be drawing conclusions from facts (or a lack of facts) that exist in prior decisions.

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