Written by Martin P.J. Kratz, QC
The Supreme Court recently addressed the approach to assessment of copyright infringement in the case of Cinar Corporation v Robinson, 2013 SCC 73, and thereby provided some important guidance to courts facing similar difficult determinations.
As a basic principle the public domain provides the rich soil from which new works can be created. The Court reaffirmed that the role of copyright provides "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" and that copyright does not provide a monopoly over facts or ideas in the public domain, "which all are free to draw upon for their own works".
In this case the plaintiff, Robinson, took inspiration from the public domain work, Daniel Defoe's novel Robinson Crusoe, first published in 1719, and drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials for a character, "Robinson Curiosity", who, like Defoe's character, lives on a tropical island and must learn to interact with others who may come to the island.
Robinson's Curiosity project failed to attract investors and died.
Many years later Robinson saw a new children's television show, "Robinson Sucroë" which he believed tracked his work. Like Curiosity, Sucroë features a bearded, Robinson Crusoe-inspired protagonist who wears glasses and a straw hat. In both works, the main character lives on an island and interacts with other characters. Notable differences between the works include that many of the other characters in Curiosity are animals, whereas in Sucroë they are mainly humans and, Sucroë, unlike Curiosity, features a band of marauding pirates as "villains".
Robinson sued claiming copyright infringement.
A key issue was whether the similar elements of both productions were based on copying or whether based on use of common public domain ideas available to anyone to use.
At trial the Court found 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 finding of infringement was upheld on appeal.
The Supreme Court noted that the copyright owner has the sole right to reproduce "the work or any substantial part thereof" and the question of what is a substantial part of a work is a flexible notion being a matter of fact and degree. In a case where many features of both works were drawn from the public domain the Court characterized the challenge as "the need to strike an appropriate balance between giving protection to the skill and judgment exercised by authors in the expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on the other".
The defendants argued that the trial judge had taken a holistic approach to assessment of infringement and that the Court should instead apply an approach similar to the "abstraction-filtration-comparison" approach used to assess substantiality in the context of computer software infringement in the United States per Computer Associates International, Inc. v Altai, Inc., 982 Ph.D 693 (2nd Cir. 1992). The defendant's three-step process would require a Court "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."
The Supreme Court criticized conducting a piecemeal analysis stating, "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."
The Supreme Court noted that the trial judge has taken into account the differences between the works and he had 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."
The Supreme Court affirmed that the finding of infringement was not focused on the public domain ideas behind Curiosity, but "in the way Robinson expressed that idea". The trial judge has found copying of the overall architecture of Robinson's submission for a television show; the graphic appearance and aspects of the personality of Curiosity's protagonist; personalities of the secondary characters; and the graphic appearance of the makeshift village.
An important implication of the decision is that copyright in a television series can extend to provide protection for such elements as the overall architecture of a submission for a television show; the graphic appearance and aspects of the personality of characters; and the graphic appearance of the setting.
The Supreme Court also addressed from whose perspective the substantial similarity is to be assessed. They stated that the question of substantial similarity "should be answered from the perspective of a person whose senses and knowledge allow him or her to fully assess and appreciate all relevant aspects ? patent and latent ? of the works at issue. In some cases, it may be necessary to go beyond the perspective of a lay person in the intended audience for the work, and to call upon an expert to place the trial judge in the shoes of "someone reasonably versed in the relevant art or technology."
On the question of personal liability, the Supreme Court found personal liability of two producers "since they deliberately and knowingly engaged in the infringement."
On the remedies, the Supreme Court acknowledged that the Copyright Act provides a dual remedy for copyright infringement: damages for the plaintiff's losses and disgorgement of the profits retained by the defendant. "Disgorgement of profits is designed mainly to prevent unjust enrichment, although it can also serve a secondary purpose of deterrence" but is not intended to compensate the plaintiff.
Of interest, the Supreme Court indicated that the cap on non-pecuniary losses (e.g., psychological suffering) in the Andrews trilogy cases was not applicable in cases that do not stem from bodily injury such as defamation (citing Hill v Church of Scientology of Toronto, 1995 CanLII 59 (SCC)) or copyright infringement as such is a breach of property rights. In the present case the Supreme Court found that "Robinson's non-pecuniary damages are analogous to those claimed by a victim of defamation. The product of Robinson's artistic exertions was taken from him and the integrity of his personal creative process was violated, causing deep psychological suffering."
On punitive damages the trial judge awarded $1,000,000, which the Court of Appeal varied to $250,000. The Supreme Court adjusted the amount to $500,000 which was apportioned among the defendants.
The Robinson case will give copyright lawyers and those who rely on copyright protection, especially in the television or new media business, much to assess.