Copyright Infringement — What is a Substantial Part of a Work?
By: John McKeown
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Robinson c. Films Cinar inc. | (WestlawNext Canada)
2013 CarswellQue 12345 | (Westlaw Canada)
Supreme Court of Canada |
The unauthorized reproduction of a substantial part of an original work constitutes copyright infringement, for which a copyright owner can seek various remedies. A recent decision of the Supreme Court of Canada considered the issue of when a substantial part of a work has been reproduced.
Claude Robinson spent years developing an educational children's television show, "The Adventures of Robinson Curiosity" ("Curiosity"). Curiosity was inspired by Daniel Defoe's novel Robinson Crusoe and Robinson's life experiences. Robinson created characters, drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials for his Curiosity project.
From 1985 to 1987, Robinson personally and through a company he controlled attempted to commercially exploit Curiosity. Cinar Corporation ("Cinar") was retained by one of Robinson's production partners as a consultant to promote the project in the United States and to offer general production advice. Two of the directors and officers of Cinar were involved in the project. Robinson gave them a copy of his Curiosity work.
During this same period, a presentation relating to the Curiosity was given to a French creator of children's television shows. Despite the various efforts undertaken by Robinson and his partners, the project failed to attract investors and stalled.
Curiosity was shelved but not forgotten. In September of 1995, Robinson watched the first television episode of a new children's show, "Robinson Sucroë" ("Sucroë"). His immediate reaction was that Sucroë was a blatant copy of his work. It also became apparent that several of the individuals who had been given access to his work, were also involved in the production of Sucroë.
An action for copyright infringement was brought against Cinar, the individuals who had copies of Curiosity or access to it, and various co-producers and distributors of Sucroë in the Superior Court of the District of Montreal.
After a lengthy trial the trial judge concluded that Robinson's Curiosity was an original work protected by copyright, that the creators of Sucroë had copied Curiosity, and that the features reproduced in Sucroë represented a substantial part of Curiosity. The trial judge awarded damages and costs — $607,489 in compensatory damages for Robinson's pecuniary losses stemming from the infringement; $1,716,804 to disgorge the profits earned by the defendants as a result of the infringement; $400,000 for the psychological harm suffered by Robinson; $1,000,000 in punitive damages; and $1,500,000 for costs on a solicitor-client basis.
The Quebec Court of Appeal
The Quebec Court of Appeal upheld the trial judge's findings on infringement and the trial judge's award of compensatory damages for Robinson's pecuniary losses, subject to a minor mathematical correction. It rejected the trial judge's order for disgorgement of profits against the individual defendants because those profits were retained by corporations. In addition, the Court of Appeal excluded amounts incorrectly included by the trial judge in the calculation of profits, reducing the amount to be disgorged.
The Decision of the Supreme Court of Canada
The defendants obtained leave and the parties appealed to the Supreme Court of Canada. The defendants appeal was dismissed and the plaintiff's appeal with respect to the disgorgement of profits was allowed in part.
The Scope of Protection Afforded by the Copyright Act
The 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": It does not give the author a monopoly over ideas or elements from the public domain. Any one is free to use this type of material as a part of own works.
The Act protects original literary, dramatic, musical, and artistic works. An original work is the expression of an idea through an exercise of skill and judgment. Ideas by themselves are not protected. Infringement consists of the unauthorized taking of that originality.
Section 3 of the Act provides that the copyright owner has the sole right to reproduce "the work or any substantial part thereof".
A substantial part of a work is a flexible notion. Whether a part is substantial must be decided by its quality rather than its quantity. It is a matter of fact and degree. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the 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 in the work.
The Assessment of Whether a Substantial Part of the Plaintiff's Work was Reproduced
The trial judge found that the defendants copied a number of features from Curiosity, including the visual appearance of the main protagonist, the personality traits of the main protagonist and of other characters, visual aspects of the setting, and recurring scenographic elements. He concluded that, considered as a whole, the copied features constituted a substantial part of Robinson's work.
In the Supreme Court of Canada it was argued that the trial judge should have applied a three-step approach requiring him to: (1) determine what elements of Curiosity were original, within the meaning of the Copyright Act; (2) exclude non-protectable features of Robinson's work (such as ideas, elements drawn from the public domain, and generic elements commonplace in children's television shows); and (3) compare what remains of Curiosity after this "weeding-out" process to Sucroë, and determine whether a substantial part of Curiosity was reproduced.
This approach is similar to the "abstraction-filtration-comparison" approach used to assess substantiality in the context of computer software infringement in the United States. While the Court did not exclude the possibility that such an approach might be useful in considering computer programs, many types of works do not lend themselves to a reductive analysis. Canadian courts have generally adopted a qualitative and holistic approach to assessing substantiality. The Court referred to the writer's work and said:
"The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff's right." J.S. McKeown, Fox on Canadian Law of Copyright and Industrial Designs (loose-leaf), at p. 21-16.4.
As a general matter, it is important not to conduct the substantiality analysis by dealing with the copied features piecemeal. 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.
As a result the Court concluded that the trial judge did not err by failing to follow the three-step approach advocated by the defendants.
The expression of brand image and the presentation of product packaging may be protected under the Act so this decision will be relevant for brand owners. The decision should provide helpful direction when assessing whether a substantial part of a work has been reproduced.
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