Pinto v. Bronfman Jewish Education Centre

Pinto v. Bronfman Jewish Education Centre
Court (s) Database
Federal Court Decisions
Date
2013-09-11
Neutral citation
2013 FC 945
File numbers
T-1070-07
Decision Content
Federal Court
Cour fédérale
Date: 20130911
Docket: T-1070-07
Citation: 2013 FC 945
Ottawa, Ontario, September 11, 2013
PRESENT: The Honourable Mr. Justice Rennie
BETWEEN:
YEHUDA PINTO
Plaintiff
and
BRONFMAN JEWISH EDUCATION CENTRE, TOVA SHIMON, SHLOMO SHIMON,
TAL AMI - TOCHNIT LIMUDIM IVRIT MORESHET ISRAEL BE’AM, TAL AM
Defendants
REASONS FOR JUDGMENT AND JUDGMENT
TABLE OF CONTENTS
Overview..................................................................................................................................... 1
Parties.......................................................................................................................................... 2
Issues........................................................................................................................................... 3
Evidence..................................................................................................................................... 3
Tal Sela................................................................................................................................... 3
Grade One Pilot..................................................................................................................... 5
Grade One Commercial Edition........................................................................................... 11
Grades Two to Four............................................................................................................. 14
Goof-Li................................................................................................................................ 18
Breakdown of Relationship................................................................................................. 22
Discussion................................................................................................................................. 25
Québec Superior Court Judgment........................................................................................ 25
Credibility............................................................................................................................ 26
Copyright Ownership........................................................................................................... 29
Music.................................................................................................................................... 32
Songs.................................................................................................................................... 33
Sound Recordings................................................................................................................ 34
Compilation.......................................................................................................................... 36
Licence, Consent and Revocations...................................................................................... 38
Limitations........................................................................................................................... 41
Defendants........................................................................................................................... 45
Statutory Damages............................................................................................................... 46
JUDGMENT............................................................................................................................. 52
Overview
[1] The plaintiff, Yehuda Pinto, brings this action seeking damages from the Bronfman Jewish Educational Centre, TaL AM, Tova Shimon and Shlomo Shimon for copyright infringement.
[2] This allegation relates to Mr. Pinto’s work composing, performing, producing and recording music for TaL AM, a curriculum for teaching Jewish language, religion, culture and history in elementary schools. The TaL AM curriculum, developed by the defendants and others, is a worldwide success, taught in at least 347 schools across Canada, the United States, Europe, South Africa, South America, Australia and Asia.
[3] The parties agreed that Mr. Pinto owns the copyright to his original compositions. However, the defendants argue that Mr. Pinto gave his permission for the use of his music, as part of the contract for his services. The determinative issue is, therefore, consent.
[4] I have concluded that Mr. Pinto did consent to the use of his music, granting an implied licence to the defendants. The defendants have not exceeded the scope of this licence. Therefore, this action is dismissed.
Parties
[5] Mr. Pinto immigrated to Canada from Israel in 1987. He began performing at functions such as weddings and bar mitzvahs for the Jewish community and developed a reputation as a talented musician.
[6] Bronfman Jewish Education Centre, previously known as the Jewish Education Council (referred to as BJEC throughout), is a non-profit organization incorporated in Québec. Its mandate is to coordinate, plan and support Jewish education in Montréal. It receives funding from Federation CJA, the central organization for planning and coordinating services and fundraising for Montréal’s Jewish community.
[7] The defendants Shlomo Shimon and Tova Shimon are husband and wife.
[8] Mr. Shimon has worked as a high school teacher. His academic background is in Jewish studies and educational technology. Mr. Shimon was BJEC’s Chief Executive Officer during the relevant times.
[9] Ms. Shimon was BJEC’s Director of Curriculum Development. She was responsible for the development of TaL AM, and its precursor Tal Sela, an educational program to teach the Hebrew language in Jewish day schools. She has worked as a high school teacher and principal and taught for ten years at McGill University’s teachers’ training program. She has studied philosophy of religion, educational technology and curriculum development.
[10] In October of 2006, TaL AM became a separate legal entity from BJEC. On April 1, 2007, all assets and liabilities relating to the TaL AM curriculum were transferred from BJEC to TaL AM. Ms. Shimon is the President and Executive Director of TaL AM. Mr. Shimon is the Director of Operations.
Issues
[11] This trial raises the following issues:
1. Who owns copyright for the music, the songs, the recordings and the curriculum;
2. Whether Mr. Pinto granted BJEC a licence, and if so, on what terms;
3. Who are the proper defendants; and
4. What is the quantum of damages.
Evidence
Tal Sela
[12] Along with a team from BJEC, Mr. and Ms. Shimon created Tal Sela, a Hebrew language education curriculum for students in grades 2 to 6 at Jewish schools. In 1979, TaL Sela received government funding, and an endorsement from the Canadian Jewish Congress. This provided the seed money to develop the curriculum.
[13] The music for the curriculum was composed, arranged, performed, produced and recorded by Fran Avni, a music teacher in Montréal. Due to funding limitations, BJEC did not pay Fran Avni an hourly fee for her work. Rather, BJEC agreed to pay her a royalty per cassette sold, originally $2.75 and then $3.00. BJEC forwarded her an advance on the future royalties for each grade she worked on in order to cover production expenses. For example, in 1986 Fran Avni was paid a $6,500 advance for grade five. This advance was paid back in 2001, at which point she began earning royalties. In 2012, Ms. Avni was paid $30 in royalties.
[14] Dina Sabbah, a music teacher, also composed some original music. Ms. Sabbah has a PhD in musicology and a Masters degree in education. She had an oral agreement for remuneration, first on a per song basis, and subsequently, based on her time. She had no expectation of receiving royalties.
[15] Ms. Shimon testified that research and development for Tal Sela cost approximately $600,000. Production cost an additional $400,000. The government grant was approximately $207,000. There were other funding sources, such as $50,000 from the Pincus Foundation, and various private donations. However, these donations and grants were not sufficient to cover Tal Sela’s costs. The program “went into the red.” Federation CJA acted as Tal Sela’s bank and provided a loan. Additionally, Ms. Shimon volunteered her time for a year, without pay.
[16] By 1989, Tal Sela was used in 167 schools across North America, Europe, South Africa and Australia. The sales from the Tal Sela program eventually covered the expenses and all of the debts were repaid. Ms. Shimon explained that they then began saving for the next phase of curriculum development.
Grade One Pilot
[17] Tal Sela’s success led Mr. and Ms. Shimon to consider a new program, TaL AM, which would go beyond teaching the Hebrew language but also encompass Jewish history, religion and culture in a fully integrated curriculum.
[18] Several BJEC employees were responsible for TaL AM’s development. In addition to Mr. and Ms. Shimon, two coordinators, Drorit Farkas and Miriam Cohen were involved.
[19] Ms. Farkas began her involvement with Tal Sela in 1985 as a freelance story writer. Her academic background is in Jewish philosophy and thought, with a concentration in history and special courses for children’s literature. She was paid per story and for her time, without any written agreement. She was never paid royalties.
[20] Ms. Cohen has a PhD in science education from the University of Florence in Italy and she has extensive curriculum writing expertise from the University of Tel Aviv. Ms. Cohen testified that TaL AM was “poor” at this stage, and so she was paid only minimum wage.
[21] The TaL AM team began developing grade one for TaL AM in 1990 and by 1992 the team was ready to begin testing of the pilot program in schools which already used TaL Sela.
[22] At this point, TaL AM required a musician to provide the musical component for the program. As Ms. Shimon explained in her testimony, music facilitates memory. It reinforces language patterns and important concepts. Additionally, music acts as a trigger, to remind students of certain concepts from one year to the next. Finally, music sets the mood, allowing for celebration and joy in the classroom. Music was integral to the curriculum; not in and of itself, but as a means to achieve the pedagogical objectives.
[23] Mr. Pinto first became involved in 1992, when Ms. Cohen invited him to sing Israeli songs at an event for the Tal Sela teachers. At the end of the performance, Ms. Farkas approached him regarding the possibility of him composing music for TaL AM.
[24] The next day, Mr. Pinto met Ms. Shimon who explained the objectives of the Tal Sela curriculum. She explained that Tal Sela was being used in Jewish day schools to teach Hebrew to students in grades two to six. She indicated that the curriculum for grade one, TaL AM, was in the process of being written and would require supporting music.
[25] Mr. Pinto has given inconsistent evidence regarding whether he knew about Tal Sela before meeting with Ms. Farkas and Ms. Shimon. At trial, Mr. Pinto testified that he was previously unfamiliar with the curriculum. However, on cross-examination he was directed to his testimony before the Québec Superior Court on February 22, 2011, at which time he testified that he was aware of Tal Sela because his daughter was learning Hebrew through the curriculum in her grade two class.
[26] There is also some dispute as to whether Ms. Shimon informed Mr. Pinto that Tal Sela was being taught outside of Montréal. Mr. Pinto testified that she stated it was taught in the Montréal area. Ms. Shimon specifically remembers showing Mr. Pinto a map of the world with pins showing the different countries and schools that were using Tal Sela.
[27] Ms. Shimon also told Mr. Pinto that Ms. Avni had been the composer and producer of the music for Tal Sela. Mr. Pinto testified that he wanted to meet with Ms. Avni to learn why she was not proceeding with TaL AM and the nature of her contract.
[28] Mr. Pinto met with Ms. Avni, who explained that she was not interested in working on TaL AM and had no objection to his involvement. Ms. Avni told Mr. Pinto that she had a written contract. Mr. Pinto testified that he asked Ms. Avni for details of the agreement but that Ms. Avni told him the agreement was “privileged.”
[29] After preparing a sample of his work, Mr. Pinto was retained as a freelancer to compose, arrange, perform, produce and record music for the grade one pilot of TaL AM. The curriculum would require both original compositions and his performance and arrangement of songs written by others including popular traditional songs.
[30] There was no written contract. Accordingly, it is crucial to determine what transpired between Mr. Pinto and Ms. Shimon. These conversations took place in Hebrew, without explicit reference to royalties, copyright or other legal terms. Additionally, more than two decades have now passed since the initial contract negotiations took place.
[31] Ms. Shimon testified that she informed Mr. Pinto that all artists who contributed to the curriculum would work on a freelance basis and would be paid for their services in accordance with a fee schedule. Mr. Pinto was to be paid $30 per hour to compose, arrange, produce and record music. The finished product would belong to BJEC as its “gift to the Jewish people” and there would be no additional payments. Ms. Shimon insists that she emphasized that all “rights” would be with TaL AM, consistent with her discussions with all TaL AM freelancers, including graphic designers and illustrators. Avi Katz, an Israeli illustrator, testified that he worked for TaL AM on this basis.
[32] Ms. Shimon testified that revenues were to be saved for the next phase of curriculum development. Curriculum has longevity of about seven to ten years. After that, it must be updated to what is relevant for the next generation. Therefore, she considered it essential that TaL AM have seed money and generate funds for subsequent stages. She did not wish to repeat the funding difficulties experienced with Tal Sela.
[33] Mr. Pinto recalled requesting a written contract, and expressing the desire to retain his “rights.” He testified that the first thing he mentioned to Ms. Shimon was copyright ownership. He recalls her saying that “they are in the red.” He claims to have replied “come to me with [a] written agreement and I would be delighted to work with you.”
[34] In the meantime, Mr. Pinto stated that he agreed to work in accordance with the tariff or fee schedule that Ms. Shimon offered. He testified, “Tova Shimon offered to pay me until she gets back to me with [an] agreement.” He agreed that the rate of $30 per hour included composing, producing, arrangement and studio work.
[35] Ms. Shimon did not recall any mention of a written agreement. She denied agreeing to provide him with one as none of the freelancers retained for TaL AM had written contracts. Ms. Shimon insists that she was clear that no freelancer would receive additional payments beyond what was invoiced and that “everything belongs to TaL AM and nothing will be paid beyond that payment that he gets. What he invoices for, that’s what he gets.”
[36] Mr. Pinto did not raise the issue of royalties at this time, as he did not yet know about the concept.
[37] The work process, insofar as it relates to Mr. Pinto, then proceeded as follows:
a) Mr. Pinto was given lyrics connected to a concept or lesson in the curriculum. Some of these lyrics were accompanied by music, either popular songs or songs written by other composers who had worked with the program. Ms. Shimon, Ms. Cohen and Ms. Farkas would discuss with him the mood, tone and function of the song, namely how it connected to the lessons. The BJEC Curriculum Department wrote the lyrics for 58 of the songs in question.
b) For the texts with music, Mr. Pinto would arrange the melody to suit the texts.
c) For the texts with no music, Mr. Pinto would create a composition. Ms. Shimon testified that Ms. Sabbah assisted Mr. Pinto as a music consultant. Ms. Sabbah confirmed this in her testimony. However, Mr. Pinto does not recall meeting Ms. Sabbah during this time and denies that she assisted him with the compositions.
d) After composing or arranging the music, Mr. Pinto would meet with Ms. Shimon, Ms. Cohen and Ms. Farkas. Ms. Shimon and Ms. Cohen explained that they would listen to Mr. Pinto perform his work on the guitar in their office. In some cases, they would suggest changes or adapt the lyrics of the songs to better fit the music. Ms. Cohen testified that it was collaborative. They would sing with him, to see if the tempo was appropriate or if the pitch was too high or low for the children.
e) Mr. Pinto recorded the songs at a studio located within the Federation CJA building. A female teacher also sang for some recordings, and Mr. Pinto paid her.
f) Henry Beagal, the studio technician, mixed the recordings and then provided BJEC with cassettes.
[38] In 1992 and 1993, the pilot was tested in twelve schools located in Montréal, New York City, Los Angeles, Atlanta, Chicago and Seattle, according to the testimony of Ms. Shimon and Ms. Farkas.
[39] Two teachers, Tovi Varga and Sharon Cohen, explained that, during the pilot phase, the teachers were given student workbooks, large books, library books, flashcards, posters and music. Sharon Cohen explained that the components are all integrated through visual consistency, repetition and key words. As the teacher guided the students through their workbooks, the songs reinforced the lesson.
[40] The teachers then attended sessions with TaL AM to provide feedback and view videos of the actual classroom instruction. Mr. Pinto was not provided with the videotapes as the participating schools requested that no copies be made. In his testimony, Mr. Pinto stated that he was “denied categorically” from accessing the feedback and videos. However, Ms. Shimon testified that Mr. Pinto was invited to attend and hear the feedback.
Grade One Commercial Edition
[41] From 1993 to 1995 there was no work for Mr. Pinto as the TaL AM team prepared for the full launch of the grade one program. Mr. Pinto performed occasionally at seminars for the teachers running the pilot testing. The TaL AM team also engaged him for private functions. For example, he performed at Ms. Cohen’s son’s bar mitzvah. She prepared a book with his songs, picture and phone number to promote his work.
[42] In 1995, TaL AM approached Mr. Pinto to arrange, perform, produce and record music for the final edition (also called the commercial edition) of the grade one program.
[43] Ms. Cohen provided Mr. Pinto with final versions of the music and they worked together on pre-production between the spring of 1995 and early 1997. Mr. Pinto’s invoices demonstrate that he and Ms. Cohen spent a substantial amount of time before recording, during which he received the repertoire and they determined the “geograph[y]” of the compositions. This collaborative process is described, for example, on invoice 49022, dated August 14, 1995.
[44] Once it came time to record, Mr. Pinto selected an external studio, that of Elan Kunin. He paid Mr. Kunin $10.00 per hour for use of the studio, including access to the equipment and Mr. Kunin’s keyboard accompaniment. Mr. Pinto also hired a female teacher as a vocalist, and paid her $10.00 per hour. He selected children to sing and rehearsed the songs with them. The various components were then mixed together at Mr. Kunin’s studio onto analog chrome cassettes, which Mr. Pinto provided to Ms. Cohen or others at BJEC.
[45] Henry Biegel, the BJEC studio technician, added additional sounds or music components needed for the curriculum, such as prayers or Biblical verses read by a Rabbi, Mr. Lanton. Mr. Biegel then reproduced the final product on audiocassettes which BJEC sold to schools.
[46] As before, during the commercial production phases, Mr. Pinto was paid an hourly rate for his services. From this he paid the charges of studio time while he was recording and the female vocalist’s fee. He also invoiced BJEC for certain expenses. For example, invoice number 49020 dated May 23, 1995 includes a charge of $25.05 for two Digital Audio Tape (DAT) cassettes.
[47] Mr. Pinto testified that he raised the issue of copyright and his desire to be paid additional money several times in 1995. He says that he was always told that BJEC was “in the red” but that they would get back to him in writing at a later date.
[48] Between April 28, 1995 and July 28, 1997, Mr. Pinto invoiced and was paid $34,941.51 for his services.
[49] Once the commercial production phase of grade one was completed, in December of 1997, BJEC gave Mr. Pinto a “bonus” of $100 for each of his 14 compositions which would be used in the final grade one curriculum. Mr. Pinto’s payment for the pilot compositions had been relatively low and BJEC wished to provide him with additional compensation. Ms. Cohen explained that, at the pilot stage, TaL AM had few financial resources. By this point, however, there was more money. The possibility of this bonus had been discussed in or around 1995 as the pilot testing proved to be successful. It was also anticipated that, going forward, Mr. Pinto would not have work from TaL AM for some time.
[50] Mr. Pinto was given a cheque for $1400 at a meeting with Ms. Cohen. There is no evidence that copyright or royalties were discussed at this meeting. Mr. Pinto took contemporaneous notes, which indicate that Ms. Cohen suggested that, given that his work had come to an end, he meet with principals and teachers from schools who taught the curriculum to secure performance engagements at those schools.
[51] Mr. Pinto testified that later in 1997, Mr. Shimon asked him to provide the DAT cassettes (the master tapes) for the grade one curriculum, which he did. Mr. Pinto’s invoice no. 49049 dated July 28, 1997 contains a charge for duplication of the master cassettes.
[52] Ms. Cohen’s testimony on this point is different. She testified that in 2002, the schools wanted the music on CDs, rather than cassettes. Therefore, she asked Mr. Pinto for the master tapes so that TaL AM could convert the music to CDs. She states that Mr. Pinto requested payment for the master tapes, and that she paid him by cheque on BJEC’s behalf. She did not remember how much he was paid and could not produce an invoice or cheque confirming this payment and the date.
[53] The TaL AM materials for grade one, in particular the audiocassettes, workbooks and guide readers contain the statement that BJEC owns the copyright.
Grades Two to Four
[54] Mr. Pinto did not provide services for TaL AM between 1997 and 2002. However, he performed at schools offering the TaL AM curriculum, at teachers’ seminars and at private events hosted by members of the TaL AM team.
[55] During these years, TaL AM began development of the grade two pilot, financed by the sales from the grade one program. BJEC also secured additional grants and donations. Most significantly, in 2000 BJEC began receiving grants from the AVI CHAI Foundation, in exchange for offering a 33% discount on the price of materials to be purchased at schools.
[56] During this five year hiatus Mr. Pinto periodically contacted members of the team to ask whether there was any work for him. In the spring of 2002, Ms. Farkas contacted him to compose music for the grades two and three pilots.
[57] Mr. Pinto testified that he again raised the issue of copyright and his desire for a written agreement. He stated that Ms. Shimon indicated that she would get back to him regarding a written agreement. As before, Ms. Shimon denies this.
[58] It is Ms. Shimon’s testimony that the terms and conditions remained as before, except that Mr. Pinto’s fee schedule had increased. Mr. Pinto was again to be paid an hourly rate for his services and expenses and a $400 flat rate per composition.
[59] The rate of pay between July 2002 and July 2003 was $35 per hour for arrangement of music, $45 per hour for studio time, $50 per session for text and song presentation sessions and $25 or $45 per track for singing.
[60] Between August 2003 and 2004, Mr. Pinto invoiced higher amounts: $40 per hour for arrangement of music, $50 per hour for studio time, $55 per session for text and song presentation sessions, $55 per track for singing, $450 per song for composition and $200 for performances.
[61] Between April and November 2004, Mr. Pinto invoiced: $55 per hour for directing, rehearsals, presentations, meetings and workshops, $25 per hour for office work, $35 per hour for arrangement of music, $55 per hour for studio time, $105 per track for singing and $450 per composition.
[62] Mr. Pinto’s rates again increased in December 2004: $55 per hour for arrangement of music, $90 per hour for studio time and music production and $110 per track for singing.
[63] BJEC paid every invoice as submitted. Between July 11, 2002 and June 6, 2006, Mr. Pinto invoiced and was paid $299,562.25 for his services and expenses.
[64] Mr. Pinto testified that throughout 2002 to 2006 he would raise the issue of copyright ownership, a written agreement, and the payment of additional compensation. To a certain extent, this is corroborated by the testimony of other witnesses. Ms. Shimon recalls Mr. Pinto first speaking to her about copyright in 2002 and she states that she consistently told him that TaL AM would own the work.
[65] Ms. Cohen confirmed that Mr. Pinto asked her about copyright and compensation. Specifically, he would ask, “[w]hat about my rights?” Ms. Cohen responded by referring him to Ms. Shimon. She recalled saying, “Yehuda, listen, I don’t have rights. Tova doesn’t have rights. Drorit doesn’t have rights. Nobody has rights. The copyrights are […] TaL AM. There is nothing to say.”
[66] Ms. Farkas agreed that Mr. Pinto often requested additional money, but that he did not raise copyright ownership specifically.
[67] Mr. Shimon recalls speaking with Mr. Pinto regarding copyright and additional compensation, and states that he always confirmed that there would be no additional compensation beyond what was invoiced. No witness other that Mr. Pinto recalled him asking specifically for a written agreement.
[68] The creative process for grades two to four was similar to that for grade one. Again, Ms. Farkas, Ms. Cohen or Ms. Shimon provided Mr. Pinto with the curriculum content in the form of lyrics to compliment and reinforce the lessons contained in the curriculum. Ms. Farkas and Ms. Cohen described the desired theme and mood, the “colour” and “geography” of the song. Mr. Pinto composed the music and presented it to Ms. Shimon, Ms. Cohen and Ms. Farkas. Ms. Farkas offered her guidance regarding what would be agreeable to the TaL AM team.
[69] Once the compositions were settled, Mr. Pinto arranged, performed, produced and recorded the songs at a studio he selected. Mr. Pinto also edited certain songs from grade one to be included in the grade two curriculum. In the same way, he edited songs from grades one and two to be used in grade three. At the direction of the curriculum developers, songs were repeated year to year, as a memory-trigger for the children moving from one grade to the next.
[70] For the pilot version of grade two, Mr. Pinto used the music studio of Alexander Ivanov. For the final version of grade two he used the music studio of Lahit Barosh. He paid for the use of each studio and Mr. Barosh charged between $20 and $27 per hour.
[71] Mr. Pinto then provided BJEC with a master CD containing the music he had recorded. The final product included CDs for grades two and three which contain the statement that BJEC owns copyright.
[72] Mr. Pinto began work on grade three in 2003. The process for grade three was the same as the process for grade two.
[73] At times, Ms. Shimon would write Mr. Pinto a personal cheque because BJEC required time to process an invoice and Mr. Pinto wished to be paid on a “rush” basis. For example, Ms. Shimon wrote Mr. Pinto a personal cheque on August 4, 2002 to pay an invoice dated July 28, 2002. Mr. Shimon also assisted Mr. Pinto by guaranteeing a loan of $7,000 in 2006. Mr. Shimon had to pay $800 for this loan because Mr. Pinto did not repay all of it.
[74] Mr. Pinto testified that in late 2003 he received the collection of CDs for grade one, along with the pilots for grades two and three. He testified that in his view TaL AM “tampered” with his music, in transferring it from cassette to CD.
[75] In 2005, he was asked to begin work for the pilot version of grade four. He submitted a pilot, but had no further involvement in the grade four curriculum. None of his new compositions were included in grade four, though grade four did include some of his earlier compositions for grades one to three.
[76] During this time, Mr. Pinto attended seminars for teachers offering the curriculum. These teachers came from schools in Canada, the United States, France, Switzerland and Israel.
Goof-Li
[77] Dr. Goof-Li is a character who appears in grade two of TaL AM to teach healthy nutrition to students as part of a module on daily living. He had also previously appeared in TaL Sela’s, “Bon Appetite” unit. His character appears in a play for the children to perform, including various songs to teach the material. Ms. Varga, a teacher, testified that the Dr. Goof-Li play is integrated into the grade two program. She explained that grade three also has plays.
[78] Mr. Pinto composed music to accompany the lyrics for this play, beginning in the summer of 2005. Invoice number 30832, dated August 16, 2005, indicates that he received the concept of the play during a meeting with Ms. Cohen on July 26, 2005. Ms. Farkas explained that she presented the work to Mr. Pinto in the same manner as the other songs and that she worked closely with him to provide comments and feedback.
[79] Mr. Pinto describes Dr. Goof-Li as being a separate work product, apart from the grade two curriculum. However, the exhibits and testimony of Ms. Shimon, Ms. Varga and Ms Farkas establish that Dr. Goof-Li was integrated into the curriculum, as were other plays.
[80] Invoice 30833 indicates that Mr. Pinto produced the music for “Dr. Guff [sic] Li” over eight hours on September 21, 2005. He charged $90 per hour for this work. He invoiced seven hours of work, at a rate of $55 per hour, for a January 19, 2006 meeting with Ms. Farkas. The meeting involved several topics, including Mr. Pinto’s presentation of Dr. Goof-Li.
[81] Mr. Pinto testified that on January 23, 2006, Ms. Farkas called him to request his completed work on Dr. Goof-Li on an urgent basis, as Ms. Shimon required it for a seminar in Los Angeles. That evening, Mr. Pinto delivered the CD to Ms. Farkas at the BJEC office in Montréal.
[82] What transpired during the evening of January 23, 2006 is highly contested. In the Agreed Statement of Facts and Admissions, the parties agree that the CD he provided was “for those portions of the ‘Dr. Goof Li’ play which BJEC indicated were to be incorporated into the workbook.” On delivery of the CD, Mr. Pinto states that he informed Ms. Farkas that he owned copyright to the music for Dr. Goof-Li and requested a meeting with Ms. Shimon as soon as she returned from Los Angeles. He also testified that the CD he provided contained an inscription asserting his copyright.
[83] Mr. Pinto testified that he made three identical copies of this CD. The first he gave to Ms. Farkas and it is now lost. The second and third, he kept. He tendered as evidence one CD, said to be one of the two he kept for himself.
[84] Ms. Farkas denies that Mr. Pinto raised the issue of copyright on this date and states that there was “no way” that the CD he provided her had a copyright inscription. She said “had I seen this [referring to the CD that Mr. Pinto put into evidence], I would have been at Shlomo’s in the same minute.” On cross-examination, she repeated “[n]o, I can tell you categorically this is not the CD I received in my hands because it could not have had that. Had I seen that, I would have stopped it. So categorically, no. This is not what I got.”
[85] Ms. Shimon confirmed that she did not see any assertion of copyright on the CD she received in Los Angeles. This CD has not been located.
[86] That evening, Ms. Farkas asked Ami Brandes to make a reproduction of the CD which she then sent by courier to Ms. Shimon in Los Angeles. Ms. Farkas does not remember what happened to the original CD. It is impossible to confirm, by direct evidence, exactly what, if anything, Mr. Pinto wrote on it.
[87] The next day, January 24, 2006, Mr. Pinto met with Mr. Shimon and played the Dr. Goof-Li CD. Mr. Pinto testified that he told Mr. Shimon that he owned copyright to this music and showed him the copyright notation. He states that he informed Mr. Shimon that he was providing the Dr. Goof-Li music for the purpose of the Los Angeles seminar only. Mr. Pinto claims that he advised Mr. Shimon that there was to be no reproduction of this music until the issue of copyright was resolved. Mr. Pinto recalls Mr. Shimon stating that BJEC owned the music because they were paying him to compose it, but that he could speak with Ms. Shimon about the subject when she returned from Los Angeles. Mr. Pinto also remembered Mr. Shimon telling him that Fran Avni had been paid $8.00 per cassette for her work on the Tal Sela project.
[88] Mr. Shimon does not remember Mr. Pinto raising the issue of copyright at this meeting.
[89] Mr. Pinto met briefly with Ms. Shimon on February 6, 2006 and then again on February 9, 2006. He remembers Ms. Shimon telling him that he would not be paid royalties in respect of Dr. Goof-Li and that BJEC owned the copyright. Mr. Pinto recalls replying that BJEC could not use his music for Dr. Goof-Li beyond the Los Angeles seminar.
[90] During this meeting, Ms. Shimon advised Mr. Pinto that she considered a recent invoice to be “outrageously high” (invoice no 30836 dated January 22, 2006 in the amount of $18,237.21). While Ms. Shimon arranged for BJEC to pay the invoice, she required him to sign a letter acknowledging that BJEC would review all of his invoices for excessive charges.
[91] Mr. Pinto testified that the meeting concluded with Ms. Shimon’s promise that she would get back to him within two weeks with an agreement for the work conditions. Ms. Shimon denies this.
[92] In February or March of 2006, Ms. Farkas asked Mr. Pinto to provide her with a Dr. Goof-Li CD containing the voices of the children. Mr. Pinto did so. He had no further involvement in the Dr. Goof-Li music.
[93] The grade two TaL AM curriculum includes CD 2S-C2. Tracks 17-36 of this CD are Dr. Goof-Li’s interactions with the different food groups and the singing of the children from the CD Mr. Pinto provided. Mr. Pinto testified that school children have performed the Dr. Goof-Li play. He states that he never authorized BJEC or TaL AM to allow this.
Breakdown of Relationship
[94] The parties ended their relationship in July of 2006.
[95] From March 6, 2006 onwards, Mr. Pinto began including hidden or concealed text in his invoices regarding copyright. Mr. Pinto submitted his invoices electronically, and each expense was written in black font on the white background of the invoice. The hidden text, however, was written in white font, on the white background, rendering it invisible unless highlighted by the curser on the screen. Among other things, the annotations stated that “[a]ll of my invoices in the past including this invoice are for my music production and studio services only.”
[96] On June 5, 2006, Mr. Pinto requested an advance of $20,000 to help him pay for his daughter’s wedding, which was taking place on June 21, 2006. He made this request to Ms. Farkas, asking that she convey it to Ms. Shimon. The next day, he met with Mr. Shimon and again requested the advance. After some discussion, Mr. Shimon stated that BJEC might be able to advance $12,000 but that the rest of the money would be retained to defray studio expenses. Mr. Shimon stated that he would have to consult with other individuals at BJEC.
[97] The next day Mr. Shimon wrote Mr. Pinto a cheque for $2,000, as a personal loan. Mr. Pinto has not repaid it.
[98] Then, sometime in early June, a BJEC employee discovered the hidden annotations on an invoice by chance. This employee notified Ms. Farkas who informed Ms. Shimon. Ms. Shimon was distressed to learn that BJEC had paid invoices which contained these annotations. Ms. Shimon and Ms. Farkas were concerned that BJEC would be taken to have consented to those terms. They also considered the inclusion of the concealed text to be a breach of trust, requiring immediate attention. In Ms. Farkas’ words, “this was such a betrayal … we worked very closely so why would he go behind my back? So I was very upset.”
[99] On June 13, 2006, Mr. Shimon telephoned Mr. Pinto stating that he had the $12,000 advance cheque. They met on June 14, 2006, and Mr. Shimon asked Mr. Pinto to sign a letter acknowledging that BJEC owned the copyright in the music which Mr. Pinto had composed: “All work that you do that is paid for by TaL AM in order to produce a master tape including compositions, arrangement, performance, recording or any other additional related work is the property of TaL AM.”
[100] Mr. Pinto refused to sign this. Mr. Shimon then presented him with a second letter, stating that Mr. Pinto’s services would be terminated unless he signed the copyright acknowledgement. The meeting concluded immediately.
[101] After that date, Mr. Pinto telephoned Mr. Shimon in an attempt to resolve the issue. Mr. Shimon simply told him to sign the letter. The two men finally met on July 4, 2006, and Mr. Pinto prepared a letter summarizing the events to date, as he saw them:
To this day you turned TaLAM to be commercial, you are advertising the product, you promote the sales of the product through seminars in Canada and around the world. You never asked my written authorization and acted as if my music is yours. My request for money advance was not granted and, you did to discontinue my services immediately, while you keep using my music on a commercial basis, which is not the first instance idea where I was used to produce my music for educational purpose.
[102] At this meeting, Mr. Shimon proposed the creation of a “best of” CD for Mr. Pinto’s music, with Mr. Pinto receiving royalties from the sale. Mr. Shimon stated he would discuss this possibility with Ms. Shimon and others at BJEC.
[103] Mr. Pinto prepared a second letter summarizing that meeting which he sent to Mr. Shimon. This letter records a discussion that the CD would be sold for $15.00 US and that Mr. Pinto would receive $3.00 US per CD sold. The letter confirms that Mr. Shimon stated that he would have to consult with others at TaL AM.
[104] On July 18, 2006, Mr. Pinto received a telephone call from Mr. Shimon’s secretary who advised that she was sending him a letter that he should read carefully. She advised him to consult a lawyer and, if he found the letter acceptable, to sign and return it. The letter contained an assignment to BJEC of his copyright interests. It also contained TaL AM’s offer to pay Mr. Pinto 10% of the gross sales revenues of the TaL AM Anthologies, without any admission of copyright infringement.
[105] Mr. Pinto declined to sign this letter and instead retained counsel. His counsel sent a letter on July 27, 2006 alleging that BJEC had engaged in “illegal duplication and distribution” of the music he had composed for the TaL AM curriculum.
[106] Mr. Pinto subsequently commenced this action.
Discussion
Québec Superior Court Judgment
[107] There has been previous litigation between th