On May 10, 2016, the Federal Court of Canada rendered its decision in Maltz v. Witterick,[1] denying the Applicants, Judy Maltz, Barbara Bird and Richie Sherman, producers of a documentary called No. 4 Street of our Lady (the “Documentary”), an award in damages for breach of copyright and infringement of moral rights allegedly caused by Jennifer L. Witterick, author of the book My Mother’s Secret (the “Book”).

In re-examining the question of whether a particular set of facts can be subject to copyright protection, this case sheds light on the “substantial taking” test as set out in Cinar Corporation v. Robinson.[2] The Federal Court, mindful not to upset the balance between the protection of original work and the public’s interest in maximizing the production of intellectual work, seemed reluctant to award copyright protection to a set of specific facts as portrayed in the Documentary. The case also briefly refers to the issue of infringement of moral rights under s. 14.1 of the Copyright Act.[3]

The issue between Maltz and Witterick arose in 2013 when Ms. Witterick first published a fictional novel online targeting a readership comprising mostly of young adults. Ms. Witterick acknowledged that she was inspired to write the novel after attending to a screening of the Documentary. Penguin Canada Books acquired the rights to the Book and later published it in Canada and the United States. Ms. Maltz’s legal counsel then sent them a cease and desist letter, alleging that the factual similarities between the Book and the Documentary amounted to a substantial taking in breach of Ms. Maltz’s copyright protection, as per Cinar. Following the cease and desist letter, Ms. Witterick made an offer to Ms. Maltz, giving her the opportunity to include “something” in the Book. In Ms. Witterick’s opinion, this gesture was meant as “an opportunity to include her views in the Book”.[4]

Given the refusal of Ms. Witterick and Penguin Canada Books to conform to the cease and desist letter, Ms. Maltz brought a claim pursuant to s. 34(4) of the Copyright Act, alleging that “the Book copies personal family stories as well as the structure and narrative devices of the Documentary”.[5] In essence, Ms. Maltz claimed that the Book copied “small facts” not documented anywhere other than in the documentary and that Ms. Witterick “used various storytelling devices from the Documentary”.[6] On the other hand, while Ms. Witterick acknowledges that the inspiration for the Book came from the Documentary, she asserts that the Documentary’s characters reproduced in the Book are facts and as such, they are not protected by copyright. In fact, she claims that only the “originality” of the work – the “skill and judgment used to shoot, compile and arrange the Documentary”[7] – is protected by copyright, and that the Book and the Documentary have a different “feel”, since the Book is a “fictional story aimed at young readers”.[8] As such, Ms. Witterick argues that Ms. Maltz failed to prove that there was a “substantial taking”, in that the Documentary was not substantially reproduced in the Book.

Justice Boswell began by holding that despite Ms. Waltz’s expert’s affidavit, no difference exists between “small” facts – e.g. one’s diary entry relating to a specific action taken on a given day – and “large” facts – e.g. universally known historical events, stating that “[f]acts are facts; and no one owns copyright in them no matter what their relative size or significance”.[9] Therefore, Justice Boswell held that using an actual fact from the Documentary in the Book did not amount to an infringement of Ms. Maltz’s copyright protection.

Justice Boswell then applied the “substantial taking” test set out in Cinar. To do so, he determined whether Ms. Witterick improperly copied “the originality of the Documentary, such as its structure, tone, theme, atmosphere and dialogue”.[10] Citing Cinar, he reminded the parties that “it is important to not conduct the substantiality analysis by dealing with the copied features piecemeal … [r]ather, the cumulative effect of the features copied from the work must be considered”.[11] Justice Boswell then found that despite the Book’s core story being “clearly taken from the Documentary”,[12] it was not sufficient to find a substantial taking given that there is no copyright in historical facts, nor in real persons, dead or alive. Furthermore, he found that there was “significant and material change in medium in the telling of the story, from the audio-visual of the Documentary to the written word and fictionalized characters of the Book, and the change from a documentary to a fictionalized story”.[13] Therefore, the originality of the Documentary remained intact, as the Book constituted a new and original work of fiction.

Justice Boswell then held that though “an author has the right to be associated with his or her work”,[14] under s. 14.1 of the Copyright Act, there was no presumption of infringement of said right in the case at bar, given the lack of evidence of prejudice presented by Ms. Maltz’s legal counsel in their Memorandum of Fact and Law. He also mentioned in obiter that had there been evidence of such prejudice, no damages would have been attributed to Ms. Maltz since she refused Ms. Witterick’s offer to include “something” about the Documentary in the Book.

Ultimately, the Maltz v. Witterick case is interesting in that it reiterated a fundamental principle in copyright law that there cannot be copyright protection in facts and offers an example as to what extent one can use names and facts from an artistic work and use it to create another original artistic work without being an infringement of copyright.