In Cinar Corporation v. Robinson, the Supreme Court of Canada (SCC) confirmed the test for determining copyright infringement and the factors for assessing compensation for infringement. The SCC effectively strengthened copyright in entertainment properties in Canada after several recent decisions in which the SCC had limited the scope of copyright protection.
The decision results from four separate but intertwined appeals involving the copying of works relating to a proposed television show. The author Claude Robinson developed a children’s educational television show titled The Adventures of Robinson Curiosity (Curiosity). Robinson drew inspiration from Daniel Defoe’s famousRobinson Crusoe novel and his own experiences. Robinson developed characters, drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials for Curiosity. The lead character Robinson Curiosity lives on an island and interacts with the local inhabitants.
In attempting to develop Curiosity, Robinson and his company Les Productions Nilem inc. (Nilem) pursued various initiatives, including providing a copy of his work to the two principals (Principals) of Cinar Corporation (Cinar). Robinson’s project stalled but Cinar released a television series titled Robinson Sucroë (“Sucroë”). The lead character in Sucroë was Robinson Sucroë, who interacted with animals and villainous pirates and, like Robinson Curiosity, wore glasses and a straw hat.
Robinson and Nilem sued Cinar, the Principals, various co‑producers and distributors of Sucroë, and other individuals for copyright infringement in the Quebec Superior Court.
QUEBEC SUPERIOR COURT
After an 83-day trial, the Quebec Superior Court concluded that Curiosity was an original work protected by copyright. The Superior Court assessed the relevant similarities and differences between the works and found that a number of features from Curiosity,including the appearance and several traits of the protagonist, the personalities of the secondary characters, visual aspects of the setting and recurring scenic elements including, in part, the graphic appearance of the makeshift village that the characters inhabit, were copied inSucroë.
The Superior Court gave little weight to similarities that were due to the generic island setting of both works. The Superior Court also concluded that the overall architecture of Robinson’s work was copied and, despite differences between the works, the features in Sucroë copied from Curiosity constituted a substantial part ofCuriosity.
The Superior Court held Cinar, the Principals, three co-producers and distributors of Sucroë, and two other individuals liable for copyright infringement. The Superior Court also held Cinar and the Principals liable for violating extra-contractual obligations of good faith and loyalty to Robinson and Nilem. The trial judge awarded, on a joint and several basis (termed a “solidary” basis in civil law), more than C$5 million in total compensation, comprising compensatory damages, the profits made by the defendants as a result of the infringement, C$400,000 for psychological harm suffered by Robinson, C$1 million in punitive damages, and costs.
QUEBEC COURT OF APPEAL
The Quebec Court of Appeal affirmed the holdings on the substantive issues, except for the finding of liability against one of the individuals. The Court of Appeal modified the awards of damages and profits, and denied profits against the personal defendants because the profits were reaped by the companies. The Court of Appeal also held that joint and several liability is not applicable to profits or punitive damages.
SUPREME COURT OF CANADA
The SCC relied on both federal copyright law and Quebec civil law in addressing numerous substantive, liability, procedural, evidentiary and remedial issues. The SCC affirmed that copyright subsisted in Curiosity and was infringed by Sucroë. Cinar, the Principals, one co-producer, one distributor of Sucroë and one other individual were held liable for copyright infringement.
The SCC addressed in detail various issues relating to the remedies. The following are the highlights of the decision:
- The development of a group of characters that have specific personality traits and whose interactions hinge on their personalities require an exercise of skill and judgment sufficient to satisfy the requirement of originality under the Copyright Act.
- A qualitative and holistic approach must generally be used to assess copyright infringement.
- Sucroë was a reproduction of the particular combination of characters in Curiosity with distinct personality traits, living together and interacting on a tropical island, elements that represent a substantial part of the skill and judgment expressed in Curiosity.
- Expert opinion that satisfies the established criteria for expert evidence may be admitted to assist a court in determining whether a substantial part of a work has been copied.
- A director or officer of a company that infringes copyright is personally liable where he/she deliberately, wilfully and knowingly pursues a course of conduct that constitutes infringement and reflects an indifference to the risk. The Principals and one other individual were held personally liable.
- An officer of a company that infringes copyright is not personally liable where he/she does not actively or passively authorize copying by the company. An officer of a co-producer avoided liability.
- In awarding profits for copyright infringement, a court need not exclude from revenues those from a soundtrack, included in a defendant’s work but not copied from the plaintiff’s work, where there is no evidence that the soundtrack has independent commercial value.
- A personal defendant is not liable for profits that he/she does not retain in his/her personal capacity. All of the individuals avoided liability for profits.
- The liability for profits from copyright infringement may not be made joint and several against multiple defendants. The SCC apportioned the award of profits among Cinar (25%), a co-producer (60%) and a distributor (15%).
- In Quebec, an author may be awarded non-pecuniary damages as compensation for psychological suffering as a result of copyright infringement. Such damages are not subject to the judicially set cap for non-pecuniary damages stemming from bodily injury. The SCC reinstated the Quebec Superior Court’s award of C$400,000 for non-pecuniary damages.
- An award of punitive damages may be justified for a violation of the Quebec Charter of human rights and freedoms by copyright infringement. The SCC awarded C$500,000 in punitive damages.
- The liability for punitive damages under the Quebec Charter may not be joint and several. The SCC apportioned the punitive damages among Cinar (40%), and each of the Principals and a third individual (20% each).