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Commentary on Robinson c. Films Cinar inc. by Dimock Stratton

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Robinson c. Films Cinar inc.
Supreme Court of Canada | 
2013 CarswellQue 12345

Copyright — infringement — substantial part — abstraction of original elements improper — cumulative effect of copied features
Copyright — infringement — damages — psychological harm — punitive
Copyright — infringement — profits — soundtrack of television show

The Supreme Court of Canada issued a unanimous decision on the issue of copyright infringement of a children’s television show, and the extent to which there is liability for disgorgement of profits, punitive damages and non-pecuniary damages.

The plaintiffs developed an educational children’s television show. Despite various initiatives to attract funding, the project stalled. In the meantime, copies had been given to Cinar. While undertaking these initiatives, copies were given to Cinar and its directors and officers Weinberg and Charest, and a presentation was given to Izard, a French creator of children’s television shows.

Subsequently, the plaintiff, Robinson, discovered a new children’s show that he perceived to be a blatant copy of his project. The parties given access to his project were also involved in producing this new show. After an 83-day trial, the plaintiffs were awarded more than $5M for copyright infringement against the corporate and individual defendants (including those named above and Davin, the CEO of a defendant company at the relevant time). The award included compensatory damages, disgorgement of profits, $400K for psychological harm, $1M in punitive damages, and $1.5M for solicitor-client costs. The award was made solidarily (common law jointly and severally). On appeal, the finding of infringement was upheld, but the Court of Appeal overturned Davin’s liability. The quantum of damages for psychological harm and punitive damages was reduced. The order for disgorgement of profits against the individual defendants was overturned because those profits were retained by corporations, and ordered disgorgement jointly (common law severally). The Court of Appeal also excluded certain amounts included by the trial judge, including profits from the soundtrack for the show.

The defendants appealed the finding of liability for infringement. The plaintiffs appealed the reduction in damages and disgorgement of profits ordered by the Court of Appeal.

Held, the defendants’ appeals are dismissed, and the plaintiffs’ appeal is allowed in part.

In regard to copyright infringement, an appropriate balance must be struck between protecting the skill and judgment exercised by authors expressing their ideas, and leaving ideas and elements from the public domain free for all to draw upon. In this case the issue was whether a substantial part of the plaintiffs’ work was reproduced by the defendants. This analysis should not be done by taking the copied features piecemeal, but by dissecting the plaintiffs’ work into component parts. The trial judge did not err in engaging in a qualitative and holistic assessment by comparing the two works, taking into account relevant similarities and differences, nor in concluding that the overall architecture of the plaintiffs’ work as a television show was copied. The overall architecture included the distinct graphic appearances and particular personalities living together and interacting on a tropical island, which were the product of Robinson’s skill and judgment sufficient to satisfy the Copyright Act’s originality criterion.

Although the question of whether a substantial part was copied was assessed from the point of view of the lay person in the intended audience, the assistance of expert evidence may be required to place the trial judge in the shoes of “someone reasonably versed in the relevant art or technology”. Since the two works were not easily amenable to side-by-side comparison, perceptible and intelligible similarities affecting a viewer’s experience necessitated expert evidence.

On the subject of personal liability, the trial judge’s finding that Weinberg and Charest was upheld (Izard did not argue that he could not be found personally liable). The Court of Appeal’s decision overturning the finding of personal liability for copyright infringement by Davin was upheld. His hierarchical position within the company was not enough to lead to the inference that he was personally, deliberately and knowingly involved in copyright infringement.

The Court of Appeal’s decision excluding profits arising from the commercialization of the show’s soundtrack was overturned. The soundtrack was only commercialized as a component of the show, and had no stand-alone value; it generated profits only as an accessory to the show. The infringers failed to discharge the onus of satisfactorily separating non-infringing from infringing activities. The Court of Appeal’s other conclusions relating to profits were upheld.

The Court of Appeal had applied a cap on the non-pecuniary damages arising from psychological harm. This was overturned, since the Court of Appeal’s basis applied only to bodily injuries. The individual plaintiff’s damages were held to be analogous to those claimed by victims of defamation. Robinson’s artistic exertions and the integrity of his personal creative process were taken from him, causing deep psychological suffering.

Punitive damages could not be awarded on a solidary basis. The need to individually assess punitive damages against each defendant militates awarding punitive damages on a solidary basis. Accordingly, the apportionment made by the Court of Appeal was upheld. However, the quantum fixed by the Court of Appeal, which was 25% of what the trial judge had ordered, was increased to $500K. Although punitive damages must be awarded with restraint, they must also fulfill its preventative purpose.

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