It put me upon reflecting how little repining there would be among mankind at any condition of life, if people would rather compare their condition with those that were worse, in order to be thankful, than be always comparing them with those which are better, to assist their murmurings and complaining.” ? Daniel Defoe, Robinson Crusoe.

As is often said, it’s a rare occurrence for an intellectual property case to reach the Supreme Court of Canada (SCC). In those rare instances, sometimes new law is pronounced that affects every Canadian, like the 2012 SCC pentalogy of copyright cases dealing with tariffs and user rights. This is not one of those. This is a case about uniquely disturbing facts and generally settled copyright law. It is also an “access to justice” case, in which a victim of dirty dealing is dragged through the appeal courts for almost two decades, ultimately emerging with a pyrrhic victory despite incurring millions in legal fees (83 day trial, four appeal proceedings) and suffering significant psychological trauma. Vindicated but broken from the voyage.

The Dreamer

Claude Robinson, who is described as a “dreamer” by a unanimous SCC, “spent years meticulously crafting an imaginary universe for an educational children’s television show” based on the 1719 Daniel Defoe novel Robinson Crusoe. As early as 1982, he drew sketches and storyboards, wrote scripts and synopses and designed promotional materials. To attract investors, he presented his original materials (e.g. proposals, treatments, formats, etc.) to various companies and individuals in Canada, the United States and France. Nothing materialized from the promotional efforts he undertook. Then in 1995, he was “stunned” to watch the television premiere of a blatant copy of his work by some real life “pirates”.

The trial judge ordered a global damage award of $5.2 million, which was reduced to $2.7 million on appeal, but then increased to $4.5 million by the SCC (contrast that amount with the recent default judgment in Fox v. Hernandez of over $10.5 million for copyright infringement).

The Robinson case deals with other legal issues besides copyright, which are quite complex, however I do not propose to cover those other issues here. For example, there is significant discussion in the SCC decision about the calculation of infringement losses (e.g. pecuniary damages, disgorgement of profits, personal versus corporate liability, joint and several liability, non-pecuniary damages, punitive damage, etc.) some of which is peculiar to the Quebec civil code. One particularly interesting aspect of the profit calculation involved the rejected argument that revenues from the audio soundtrack should be excluded from the calculation because it was not copied; it was held to have no stand-alone value and merely accessory to the infringing TV show. For this IP blog, I propose to deal only with the copyright infringement issues.

Copyright Basics

As a starting point of its December 23, 2013 decision, the SCC lays down a few fundamental axioms of Canada’s copyright infringement analytical framework:

  1. The Copyright Act strikes “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator”.
  2. The Copyright Act “seeks to ensure that an author will reap the benefits of his efforts, in order to incentivize the creation of new works. However, it does not give the author a monopoly over ideas or elements from the public domain, which all are free to draw upon for their own works”.
  3. The Copyright Act “protects original literary, dramatic, musical, and artistic works…. It protects the expression of ideas in these works, rather than ideas in and of themselves…. An original work is the expression of an idea through an exercise of skill and judgment… Infringement consists of the unauthorized taking of that originality”.
  4. The Copyright Act “does not protect every “particle” of an original work, “any little piece the taking of which cannot affect the value of [the] work as a whole”…. Section 3 of the Copyright Act provides that the copyright owner has the sole right to reproduce “the work or any substantial part thereof”.
  5. “A substantial part of a work is a flexible notion. It is a matter of fact and degree. “Whether a part is substantial must be decided by its quality rather than its quantity”…  What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein. A substantial part of a work is not limited to the words on the page or the brushstrokes on the canvas. The Act protects authors against both literal and non-literal copying, so long as the copied material forms a substantial part of the infringed work”.

None of the foregoing is particularly ground-breaking. It makes eminent sense to look at all of the surrounding facts and circumstances to get a better appreciation of what was infringed, just as the SCC proclaimed in the Masterpiece case about trade-mark confusion and infringement. One should not get into dissections and minute parsing to avoid what should be readily apparent as a logical conclusion to the ordinary person.

Copying a Substantial Part

In order to avoid liability for their infringement, the appellants argued that the SCC should apply an American 3-step infringement test, called “abstraction-filtration-comparison”, whereby a judge must (1) determine in abstract what elements of the allegedly infringed work are original and capable of copyright protection, (2) exclude or filter out non-protectable elements of the allegedly infringed work (such as ideas, elements drawn from the public domain or generic elements) and (3) compare what remains of the allegedly infringed work after this “weeding-out” process to the infringing work to determine whether a substantial part of the original was reproduced. That “reductive” test comes from computer software infringement jurisprudence, where perhaps it is more commonplace for allegedly infringed source code to include public domain or generic programming language which an infringer cannot be held to have infringed.

While the SCC did not foreclose the use of that 3-step test in Canada in appropriate cases, it preferred to stick with the traditional Canadian “qualitative and holistic approach” in assessing whether a substantial part of the original was stolen in this particular factual matrix. Here is a key passage of the SCC decision:

“As a general matter, it is important to not conduct the substantiality analysis by dealing with the copied features piecemeal: [citation omitted]. The approach proposed by the Cinar appellants would risk dissecting Robinson’s work into its component parts. The “abstraction” of Robinson’s work to the essence of what makes it original and the exclusion of non-protectable elements at the outset of the analysis would prevent a truly holistic assessment. This approach focuses unduly on whether each of the parts of Robinson’s work is individually original and protected by copyright law. Rather, the cumulative effect of the features copied from the work must be considered, to determine whether those features amount to a substantial part of Robinson’s skill and judgment expressed in his work as a whole. (my emphasis)

The SCC also rejected arguments that the numerous differences between the works outnumbered their rather obvious similarities, such that the infringing work was in effect its own entirely new work (this raises the specter of “transformative” jurisprudence under US fair use doctrines). At most, they argued, the infringers merely reproduced ideas and elements drawn from the public domain. Here the SCC refused to embark on a fresh assessment of the factual findings made at the trial level, namely that the copying was of a substantial part of the work, not of the idea behind the work, and that the infringed work was an original work that was the product of sufficient skill and judgment to satisfy the Act’s originality criterion. These passages of the SCC decision are helpful in understanding the “similarities-differences” dichotomy:

The Cinar appellants contend that the trial judge focused almost exclusively on the similarities between Sucroë and Curiosity, and failed to consider the differences between the works. They point to significant differences between the works: the secondary characters in Sucroë are humans, whereas in Curiosity several of those characters are animals; Sucroë prominently features as its “villains” a band of marauding pirates, whereas Curiosity does not seem to have any villains; and the protagonist in Sucroë is not particularly curious, whereas curiosity is the dominant personality trait of the protagonist in Curiosity.

The question of whether there has been substantial copying focuses on whether the copied features constitute a substantial part of the plaintiff’s work ? not whether they amount to a substantial part of the defendant’s work: [citation omitted]. The alteration of copied features or their integration into a work that is notably different from the plaintiff’s work does not necessarily preclude a claim that a substantial part of a work has been copied. As the Copyright Act states, infringement includes “any colourable imitation” of a work: definition of “infringing”, s. 2.

This is not to say that differences are irrelevant to the substantiality analysis. If the differences are so great that the work, viewed as a whole, is not an imitation but rather a new and original work, then there is no infringement. As the Court of Appeal put it, “the differences may have no impact if the borrowing remains substantial. Conversely, the result may also be a novel and original work simply inspired by the first. Everything is therefore a matter of nuance, degree, and context”.

The trial judge engaged in a qualitative and holistic assessment of the similarities between the works, which took into account the relevant similarities and differences between the works… He concluded that, despite any differences between the works, it was still possible to identify in Sucroë features copied from Curiosity and that these features constituted a substantial part of Robinson’s work. (my emphasis)

Summary

In conclusion, the main copyright law take-away from the SCC Robinson decision is that the analysis for substantial reproduction remains the same as it ever was, namely that a substantial part is measured by its quality rather than its quantity. If a rogue steals a substantial portion of the originality in a work, essentially the creator’s skill and judgment, it is an infringement just as much as reproducing it entirely. It matters not whether the infringement involves literal or non-literal copying. One must assess qualitatively and holistically the similarities that the infringing work has to the original work, and put their differences into their appropriate context. While some have criticized this flexible approach for its lack of judicial predictability, life is full of “nuance, degree, and context” and so is copyright infringement analysis in Canada.