Winkler v. Hendley

Winkler v. Hendley
Court (s) Database
Federal Court Decisions
Date
2021-05-27
Neutral citation
2021 FC 498
File numbers
T-1656-16
Decision Content
Date: 20210527
Docket: T-1656-16
Citation: 2021 FC 498
Ottawa, Ontario, May 27, 2021
PRESENT: Mr. Justice McHaffie
BETWEEN:
JOHN WINKLER AND THE ESTATE OF THERESIA WINKLER
BY HER ESTATE TRUSTEE, JOHN WINKLER
Plaintiffs
and
NATE HENDLEY AND
JAMES LORIMER & COMPANY LTD.
Defendants
JUDGMENT AND REASONS TABLE OF CONTENTS
Para.
I. Overview [1]
II. Issues [7]
III. Analysis [9]
A. This is an Appropriate Case for Summary Judgment [9]
B. The Record and Evidentiary Issues [13]
(1) The podcast transcript should not be admitted [19]
(2) Mr. Fazakas’ evidence is admissible [31]
C. The Plaintiffs Have not Established Infringement of Copyright [53]
(1) General principles: fact, fiction, and copyright protection [53]
(2) The current context: fact vs fiction [64]
(3) Originality, facts, and assertions of truth [90]
(4) Substantial taking: The Black Donnellys [112]
(5) Substantial Taking: Vengeance of the Black Donnellys [155]
D. Remedy and Costs [162]
IV. Conclusion [164]
I. Overview
[1] In the early morning of August 24, 1875, eight members of the notorious Donnelly family of Lucan, Ontario, armed with nothing more than clubs, won a pitched street battle against eighteen townspeople intent on revenge. Or did they? This and similar questions arise in this copyright infringement action because the plaintiffs assert the battle was the fictional creation of Thomas P. Kelley in his 1954 book The Black Donnellys. They claim Nate Hendley’s 2004 book The Black Donnellys: The Outrageous Tale of Canada’s Deadliest Feud infringes copyright in The Black Donnellys and its sequel, Vengeance of The Black Donnellys, including by copying Mr. Kelley’s fictional events, his creative embellishments of historical events, and his cinematic story-telling style.
[2] Mr. Hendley and his publisher, James Lorimer & Company Ltd, admit Mr. Hendley used Mr. Kelley’s books, among other sources, in doing research for his own book. But they argue Mr. Hendley’s book is an original literary work not copied from Mr. Kelley’s books or any other source. They also say Mr. Kelley’s The Black Donnellys is factual and argue that having represented it as a work of historical nonfiction, Mr. Kelley and his successors cannot now claim copyright in the persons and events described.
[3] I conclude there has been no copyright infringement.
[4] I agree with the defendants that an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts. Having presented the Donnellys’ street battle and other facts and events as a true historical account based on “unimpeachable sources,” Mr. Kelley could not later assert that he was not to be taken at his word. His successors in title are in no better position and similarly cannot argue the facts were actually fictions and therefore subject to copyright protection. The passages in question are not excluded from the assessment of whether there has been copying of a substantial part of Mr. Kelley’s books, but substantiality must be determined in relation to the originality of the work that warrants copyright protection. Considering the works, their originality, and the asserted similarities holistically, I conclude Mr. Hendley did not copy a substantial part of either of Mr. Kelley’s works.
[5] In reaching this conclusion, I have accepted as admissible the plaintiffs’ expert evidence about the history of the Donnelly family, even though it comes from the father of counsel for the plaintiffs. The defendants’ concerns about independence due to this familial relationship have considerable merit. However, I find that the low standard established by the Supreme Court of Canada for admissibility and expert independence is met by the plaintiffs’ expert report. That said, given my conclusion that the plaintiffs cannot disavow the factual nature of Mr. Kelley’s account, this evidence is ultimately of limited impact in the matter.
[6] The plaintiffs’ motion for summary judgment is therefore dismissed, the defendants’ motion for summary judgment is granted, and the action is dismissed. The parties may file submissions on costs in accordance with the schedule set out at the conclusion of these reasons.
II. Issues
[7] The plaintiffs’ Statement of Claim includes claims in copyright infringement, moral rights infringement, passing off, and unfair competition. However, when bringing their motion for summary judgment in respect of the copyright infringement claims, the plaintiffs expressly abandoned the other causes of action. After the parties’ materials on the plaintiffs’ summary judgment motion had been filed, the defendants brought their own motion for summary judgment seeking dismissal of the action, to be argued on the same materials. No objection was taken to this approach and the parties agree the matter should be fully decided on these motions.
[8] The parties’ motions for summary judgment therefore raise the following issues:
Is this matter suitable for summary judgment?
Should the Court admit into evidence on the motions:
1) the transcript of a podcast written by Mr. Hendley; and/or
2) the expert reports of Raymond Leslie Fazakas?
Have the plaintiffs established the defendants infringed their copyright?
If so, what remedies are appropriate?
III. Analysis
A. This is an Appropriate Case for Summary Judgment
[9] The Court shall grant summary judgment where there is “no genuine issue for trial with respect to a claim or defence”: Federal Courts Rules, SOR/98-106, Rule 215(1). In Hryniak v Mauldin, 2014 SCC 7, Justice Karakatsanis described concisely the “no genuine issue for trial” standard:
There will be no genuine issue requiring a trial when the judge is able to reach a fair and just determination on the merits on a motion for summary judgment. This will be the case when the process (1) allows the judge to make the necessary findings of fact, (2) allows the judge to apply the law to the facts, and (3) is a proportionate, more expeditious and less expensive means to achieve a just result.
[Emphasis added; Hryniak at para 49.]
[10] Hryniak was decided in the context of the summary judgment rule in Ontario’s Rules of Civil Procedure, RRO 1990, Reg 194. However, the Federal Court of Appeal has confirmed its relevance to summary judgment motions brought under the Federal Courts Rules, while cautioning that its pronouncements should not be imported uncritically so as to amend Rule 215: Manitoba v Canada, 2015 FCA 57 at paras 11–17; Badawy v Igras, 2019 FCA 153 at para 7. The relevant principles governing summary judgment motions in the Federal Court were helpfully summarized by Justice Fuhrer in Rallysport Direct LLC v 2424508 Ontario Ltd, 2019 FC 1524 at para 42, drawing on the decision of Justice Mactavish, then of this Court, in Milano Pizza Ltd v 6034799 Canada Inc, 2018 FC 1112 at paras 24–41.
[11] In the present case, both parties brought motions for summary judgment and both ask the Court to determine the matter on these motions. Neither party argues there is a genuine issue requiring a trial. To the contrary, by letter to the Court the parties agreed the proceeding could be finally resolved through summary proceedings. While such agreement and submissions are not binding on the Court, they are persuasive, particularly in assessing whether summary judgment is a “proportionate, more expeditious and less expensive means to achieve a just result”: Hryniak at para 49; Federal Courts Rules, Rule 3.
[12] There are some evidentiary and factual complexities in this matter, notably with respect to the events described in the books about the Donnellys, whether they are true, and the extent to which that matters in the analysis. However, these complexities do not prevent a fair and just determination of this case on its merits. I am satisfied the materials before me permit me to make the necessary findings of fact and apply the law to them. I am also satisfied, given the issues and amounts at stake, the evidence filed, and the parties’ mutual submission that there are no issues requiring trial, that summary judgment is an appropriate method to secure the just, most expeditious, and least expensive determination of the proceeding on its merits: Federal Courts Rules, Rule 3.
B. The Record and Evidentiary Issues
[13] This action centres around three books: Thomas P. Kelley, The Black Donnellys (Richmond Hill: Firefly Books, 1993), first published in 1954; Thomas P. Kelley, Vengeance of the Black Donnellys (Richmond Hill: Firefly Books, 1995), first published in 1962; and Nate Hendley, The Black Donnellys: The Outrageous Tale of Canada’s Deadliest Feud (Toronto: Lorimer, 2009), first published in 2004. For ease of reference and to avoid confusion, I will refer to Mr. Kelley’s books as The Black Donnellys and Vengeance, and to Mr. Hendley’s as The Outrageous Tale. Both The Black Donnellys and The Outrageous Tale are presented as telling the true story of the infamous Donnelly family, five of whom were killed by a mob in February 1880 after decades of criminal conduct and feuding. Vengeance is a more fanciful story, whose predominantly fictional nature can be seen from its subtitle: Canada’s Most Feared Family Strikes Back From the Grave.
[14] It is undisputed that the plaintiffs now own copyright in The Black Donnellys and Vengeance. John Winkler is the son and heir of Theresia Winkler, who died in 2016. Ms. Winkler was the sole beneficiary of Mr. Kelley, who died in 1982. Although Mr. Kelley assigned copyright in the books to a third party during his lifetime, this Court confirmed in 2002 that Ms. Winkler would become owner of the copyright in 2007 by operation of section 14 of the Copyright Act, RSC 1985, c C-42, known as the “Dickens” provision: Winkler v Roy, 2002 FCT 950 at paras 6–7, 57–59, 63.
[15] Neither party filed copies of the complete works in their motion materials, relying instead on excerpts. At the hearing, I questioned my ability to assess whether there had been a substantial taking of The Black Donnellys or Vengeance by The Outrageous Tale without having full copies of the works. With the consent of the defendants, I granted the plaintiffs leave to file a further affidavit attaching the complete books for the Court’s review, which was done shortly after the hearing.
[16] In addition to the works themselves, the plaintiffs filed the affidavit of John Winkler, owner of copyright in Mr. Kelley’s books; and the affidavit of Raymond Leslie Fazakas, attaching an expert report and a supplementary expert report. Mr. Fazakas’ reports provide, among other things, his opinion that The Black Donnellys is “almost two-thirds fiction,” and that Mr. Kelley fabricated a number of the facts and events about the Donnellys that appear in the book.
[17] The defendants responded with affidavits from Nate Hendley, author of The Outrageous Tale; James Lorimer, President of Lorimer, the current publisher of The Outrageous Tale; and Louise McLean, a law clerk with counsel for the defendants. Mr. Hendley and Mr. Lorimer both described, among other things, their understanding that The Black Donnellys was a factual telling of the Donnellys’ story. Mr. Winkler filed a reply affidavit addressing matters in Mr. Hendley’s affidavit. Mr. Winkler, Mr. Fazakas, and Mr. Hendley were cross-examined on their affidavits.
[18] Two days before the hearing of the summary judgment motions, the plaintiffs filed a motion seeking leave to file the transcript of an episode of a podcast about the Donnellys written by Mr. Hendley. The defendants object to the filing of the podcast transcript. They also argue Mr. Fazakas’ evidence should be ruled inadmissible. For the reasons below, I conclude that the podcast transcript should not be accepted, and that Mr. Fazakas’ reports are admissible.
(1) The podcast transcript should not be admitted
[19] In February 2020, the podcast “Canadian True Crime” aired an episode about the Donnelly family that was written by Mr. Hendley. The plaintiffs arranged for a transcript of the episode to be prepared and sought leave to tender it at the hearing of the summary judgment motions. They argue the podcast “conspicuously leaves out” events they allege in this action Mr. Kelley invented or embellished, such as the street battle described at the outset of these reasons. They seek to use the transcript to undermine Mr. Hendley’s assertion that he believes the events recounted in Mr. Kelley’s book to be factual.
[20] Mr. Winkler swore an affidavit in support of the motion, attaching the transcript as well as some surrounding information and correspondence. Although the motion only seeks leave to tender the transcript, to be receivable evidence on the summary judgment motion, the transcript would have to be presented through an affidavit: Rule 363. I therefore consider the plaintiffs’ motion as effectively a request to file Mr. Winkler’s affidavit with the transcript attached as an exhibit.
[21] The affidavit and transcript were put forward after the date for filing evidence set out in the relevant scheduling order for these motions, after all cross-examinations had been conducted, and after the parties had filed their memoranda of fact and law. In essence, therefore, the plaintiffs seek both an extension of time to file the affidavit and transcript under Rule 8(1) and leave to file further evidence after cross-examinations under Rule 84(2).
[22] In assessing whether to extend the time for filing an affidavit, the Court will consider (i) the reasons for the delay, and (ii) the “intrinsic worth” of the affidavit, judged by its relevance, admissibility, and potential use to the Court: Altana Pharma Inc v Novopharm Limited, 2007 FC 1183 at paras 13–22, applying Mapei Inc v Flextile Ltd, [1995] FCJ No 180, 59 CPR (3d) 211 (TD) and Strykiwsky v Stony Mountain, 2000 CanLII 16155 (FC) at paras 7–9. The ultimate question for the Court is “how justice may best be done between the parties”: Altana at para 22.
[23] In assessing whether to admit evidence after the conduct of cross-examination, the Court will consider (i) the relevance of the proposed affidavit; (ii) the existence of prejudice to the opposing party; (iii) whether the affidavit will assist the Court; and (iv) the overall interests of justice including whether the evidence was available or could have been anticipated earlier: Canmar Foods Ltd v TA Foods Ltd, 2019 FC 1229 at paras 11–12, applying Pfizer Canada Inc v Rhoxalpharma Inc, 2004 FC 1685 at para 16.
[24] There is clear overlap between these factors. Considering them jointly and cumulatively, I deny the request to file Mr. Winkler’s further affidavit and the attached transcript.
[25] The podcast in question was aired in February 2020, before affidavits were filed and cross-examinations conducted. The plaintiffs’ only explanation for not putting the transcript forward earlier is that Mr. Winkler first became aware of the podcast when reviewing Mr. Hendley’s Facebook page in December 2020, a week before the hearing. There was no suggestion the podcast was hidden or otherwise unavailable earlier. Rather, Mr. Winkler had simply not conducted the investigation that resulted in him becoming aware of the podcast until after all materials had been filed. As is often said, parties to a summary judgment motion have an obligation to put their “best foot forward”: Miller v Canada, 2019 FCA 61 at paras 17, 40. In my view, this includes conducting whatever factual investigations they consider necessary to pursue or defend the motion in a timely manner to permit the facts to be put forward.
[26] More importantly, I consider the proposed evidence to be of little relevance or assistance. This action is about whether Mr. Hendley’s book infringes copyright in Mr. Kelley’s books under sections 3 and 27 of the Copyright Act. How Mr. Hendley may have written about the Donnellys in a different forum, 16 years after his book was first published, has no bearing on that question. The podcast in question tells a shortened version of the Donnellys’ story, in narrative form. The evidence does not indicate how long the podcast was, but the relevant portion of the transcript is 18 pages, considerably shorter than both The Outrageous Tale and The Black Donnellys. As the plaintiffs concede, the podcast does not purport to be an exhaustive account of what is known about the Donnellys or recounted in Mr. Hendley’s book. The plaintiffs argue they could have cross-examined Mr. Hendley about why important events were not included, or were recounted differently, in the podcast. However, it is difficult to see how the editorial selections made in preparing the podcast would be particularly probative even of the tangential question of Mr. Hendley’s continued belief in the accuracy of Mr. Kelley’s book.
[27] Nor do I consider the writing or contents of the podcast to be relevant to, or of assistance to the Court in deciding, the issue of damages. The plaintiffs argue the defendants’ good or bad faith, and their conduct during the proceedings, are relevant to their claim for statutory damages: Copyright Act, ss 38.1(5)(a)–(b). However, even if Mr. Hendley deliberately omitted from the podcast narrative events that are the subject of this dispute, the plaintiffs were unable to clearly articulate whether or why this would be an exacerbating or mitigating factor in assessing damages.
[28] My conclusions on the relevance of the podcast transcript also serve to answer the plaintiffs’ argument that the defendants had a positive obligation to produce the podcast as part of their discovery obligations under Rules 222 and 226.
[29] In terms of the interests of justice and the prejudice to the parties, I take into account that the plaintiffs should generally be allowed to try to prove their case in the manner they consider appropriate. Conversely, admitting the affidavit and podcast transcript would leave the defendants unable to respond with their own evidence. The plaintiffs did not seek an adjournment of the motions, nor an opportunity to cross-examine Mr. Hendley on the transcript. They simply sought to tender the transcript at the hearing and make argument thereon. In the circumstances of a motion that took months to prepare—all while the podcast was apparently available online—this would not be fair to the defendants.
[30] Considering all of these factors together, I conclude the interests of justice speak against admission of the podcast transcript. The evidence has little intrinsic worth, would be of little assistance to the Court in determining the central issues on these motions, the reasons for its delayed appearance are not convincing, and the defendants should not be required to argue evidence they have not had the chance to respond to. The plaintiffs’ motion to tender the podcast transcript and related affidavit is therefore dismissed.
(2) Mr. Fazakas’ evidence is admissible
[31] Much of the plaintiffs’ case relies on the expert evidence of Mr. Fazakas. Mr. Fazakas is an author, researcher, and retired lawyer. He has a particular interest in and knowledge of the Donnellys, having spent over fifty years as an “avocational researcher” of the family, and having written several books, articles and television documentaries about them. These include The Donnelly Album (Willowdale: Firefly Books, 1995), first published in 1977 and written under the name Ray Fazakas. Mr. Hendley referred to The Donnelly Album as a source in researching The Outrageous Tale and listed it in his bibliography, alongside The Black Donnellys, Vengeance, and two other books on the Donnellys.
[32] Mr. Fazakas prepared two reports. In the first, he summarized the books referred to in Mr. Hendley’s bibliography (other than his own), attached and listed other writings on the Donnellys and on Mr. Kelley’s books, and gave his opinion that some 45 passages in The Black Donnellys were fictional. This included a side-by-side listing of the passages juxtaposed against passages in The Outrageous Tale, often with commentary comparing the two. In his second report, Mr. Fazakas provided further opinion on Mr. Kelley’s books and the degree to which they were fictional, the origin of the name “The Black Donnellys,” as well as other sources, both fictional and historical, about the Donnellys.
[33] The defendants argue Mr. Fazakas’ evidence should not be admitted. They submit Mr. Fazakas is not impartial, independent, and unbiased, and that he has effectively acted as an advocate for the plaintiffs. They therefore argue he is not a properly qualified expert, and his evidence does not meet the requirements for admissibility set out by the Supreme Court of Canada in R v Mohan, [1994] 2 SCR 9 at p 20 and White Burgess Langille Inman v Abbott and Haliburton Co, 2015 SCC 23 at para 19. They point in particular to the fact that Mr. Fazakas is the father of counsel for the plaintiffs, that he effectively initiated this proceeding by drawing the existence of Mr. Hendley’s book to the attention of Mr. Winkler and noting similarities with Mr. Kelley’s books, and that he was responsible for identifying the allegedly infringing passages in The Black Donnellys the plaintiffs now rely on.
[34] As a preliminary matter, the plaintiffs argue the defendants should not be permitted to object to Mr. Fazakas’ evidence, since they did not raise the issue until their memorandum of fact and law on these motions despite having received the reports years earlier. I disagree. Regardless of any prior disclosure, the plaintiffs’ reliance on Mr. Fazakas’ reports for the purposes of their summary judgment motion did not occur until it filed them with its record. It was appropriate for the defendants to object to such evidence in response. Early notice of any such objection is certainly to be encouraged: R v Docherty, 2010 ONSC 3628 at para 12. However, I cannot conclude in these circumstances that the defendants waived any right to object by not expressly raising the issue earlier. Nor can the plaintiffs claim to be taken by surprise by the objection, as the family relationship was clearly a potential issue from the outset, and the defendants asked pointed questions about the relationship and Mr. Fazakas’ role in the litigation on cross-examination, confirming and expanding their grounds for objection.
[35] Turning to the merits of the objection, Justice Cromwell for the Supreme Court in White Burgess set out a two-step inquiry for determining the admissibility of expert evidence. First, the proponent must establish the threshold admissibility of the evidence based on the four factors set out in Mohan: relevance, necessity, the absence of an exclusionary rule, and a properly qualified expert: White Burgess at para 23; Mohan at p 20. Second, as a discretionary matter, the Court balances the potential risks and benefits of admitting the evidence to decide whether the potential benefits justify the risks: White Burgess at para 24; Mohan at p 21. These criteria apply to copyright infringement cases as in other intellectual property cases: Cinar Corporation v Robinson, 2013 SCC 73 at para 49.
(a) Step 1 of the White Burgess Analysis: Admissibility
[36] The defendants argue that Mr. Fazakas does not meet the “qualified expert” requirement of Mohan, which engages the expert’s independence and duty to the Court: White Burgess at paras 52–53. In discussing this duty, Justice Cromwell adopted the language of Justice Cresswell in The Ikarian Reefer, underscoring the importance of expert evidence being, and being seen to be, the “independent product of the expert uninfluenced as to form or content by the exigencies of litigation” and “objective unbiased opinion”: White Burgess at para 27, adopting National Justice Compania Naviera SA v Prudential Assurance Co Ltd (“The Ikarian Reefer”), [1993] 2 Lloyd’s Rep 68 (QB) at p 81, aff’d [1995] 1 Lloyd’s Rep 455 (CA) at p 496.
[37] At the same time, the Supreme Court reaffirmed that a mere appearance of bias is not enough to render expert testimony inadmissible, and that the standard is not “whether a reasonable person would consider that the expert is not independent”: Mouvement laïque québécois v Saguenay (City) 2015 SCC 16 at para 106. Rather, an expert’s evidence will be inadmissible where their lack of independence renders them “incapable of giving an impartial opinion in the specific circumstances of the case”: White Burgess at para 36, quoting Mouvement laïque québécois at para 106. This will be a rare circumstance: White Burgess at para 49. Ultimately, the question is whether the expert is able and willing to carry out their primary duty to the Court to be fair, objective, and non-partisan: White Burgess at paras 46, 50.
[38] In making this assessment, the Court is to consider the particular circumstances, the nature of the proposed evidence, and the nature and extent of any connection between the expert and the litigation or a party: White Burgess at para 49. The defendants rely in particular on the following passage from the Supreme Court’s description of these concerns, noting Mr. Fazakas’ familial relationship with counsel and his advocacy on behalf of the plaintiffs:
For example, it is the nature and extent of the interest or connection with the litigation or a party thereto which matters, not the mere fact of the interest or connection; the existence of some interest or a relationship does not automatically render the evidence of the proposed expert inadmissible. In most cases, a mere employment relationship with the party calling the evidence will be insufficient to do so. On the other hand, a direct financial interest in the outcome of the litigation will be of more concern. The same can be said in the case of a very close familial relationship with one of the parties or situations in which the proposed expert will probably incur professional liability if his or her opinion is not accepted by the court. Similarly, an expert who, in his or her proposed evidence or otherwise, assumes the role of an advocate for a party is clearly unwilling and/or unable to carry out the primary duty to the court. I emphasize that exclusion at the threshold stage of the analysis should occur only in very clear cases in which the proposed expert is unable or unwilling to provide the court with fair, objective and non-partisan evidence. Anything less than clear unwillingness or inability to do so should not lead to exclusion, but be taken into account in the overall weighing of costs and benefits of receiving the evidence.
[Emphasis added; White Burgess at para 49.]
[39] The defendants also point to the 2010 decision of the Ontario Superior Court of Justice in Docherty. There, Justice Wein found inadmissible a psychiatric report prepared by the father of defence counsel: Docherty at paras 1–4, 14. She noted the public perception of the introduction of such evidence, particularly in a case of manslaughter sentencing, stating that “[t]he apprehension of bias as well as the possibility of a subconscious bias precludes its admissibility”: Docherty at para 14. Justice Wein also expressed particular concern over the fact that the psychiatrist’s report did not disclose the relationship with his son: Docherty at para 15.
[40] I believe the defendants have satisfied their burden to show there is a “realistic concern” that Mr. Fazakas’ evidence should not be received: White Burgess at para 48. The burden is therefore on the plaintiffs to establish on a balance of probabilities that the admissibility threshold is met: White Burgess at para 48.
[41] The plaintiffs argue that despite the familial relationship, the evidence shows Mr. Fazakas is aware of his primary duty to the Court, and is able and willing to carry it out. They point to a number of circumstances they say support this conclusion and distinguish the situation from that in Docherty. In particular, they argue Mr. Fazakas’ evidence is consistent with his prior writings on Mr. Kelley’s books, even prior to the litigation, indicating that the “acid test” referred to by the Supreme Court of Canada—whether the evidence would be the same regardless of which party retained him—is met: White Burgess at para 32. They note that unlike the psychiatrist in Docherty, Mr. Fazakas’ report openly discloses that he is the father of plaintiffs’ counsel. The plaintiffs further argue Mr. Fazakas was involved in the matter before his son, who was not the plaintiffs’ original counsel, so the issue should be considered a “choice of counsel” issue rather than a “choice of expert” issue. Finally, the plaintiffs argue the Court can infer there are no other living experts who could provide the evidence Mr. Fazakas provided.
[42] With respect to the last of these points, in the absence of any evidence the plaintiffs tried and failed to retain another expert, I cannot place reliance on the supposed necessity of having Mr. Fazakas as an expert. Nor do I consider it particularly material whether counsel or the expert was involved first, as the concern over potential bias and an inability to be objective remains the same.
[43] Nonetheless, I am satisfied on balance that Mr. Fazakas’ evidence meets the “not particularly onerous” threshold of admissibility: White Burgess at para 49. I am satisfied based on my review of Mr. Fazakas’ evidence, including the transcript of his cross-examination, that despite his relationship with counsel and his connection with the subject-matter, he was aware of his primary duty to the Court, and was able and willing to carry it out: White Burgess: at para 49.
[44] I share the concerns raised by Justice Wein in Docherty regarding the appearance of having the father of counsel give opinion evidence. However, subsequent to Docherty, the Supreme Court in White Burgess confirmed the applicable standard is not that of the “reasonable observer”: White Burgess at paras 36, 50. While the public perception of the administration of justice remains a relevant consideration, the standard for admissibility is that described above. In addition, the context of this proceeding, in which private parties are disputing copyright infringement, is different than the sentencing at issue in Docherty, where public interest considerations take on a heightened importance: Docherty at para 14. While it will be rare that evidence from a relative of counsel will be tendered, and may be rare that it is admitted, I conclude it is not automatically a bar to admissibility in all cases or circumstances.
[45] With respect to the allegation that Mr. Fazakas’ reports engage in advocacy, I agree there are aspects of the reports that go beyond Mr. Fazakas’ expertise regarding the history of the Donnelly family. I have particular concern with Mr. Fazakas’ efforts to address not only what is fact and fiction in The Black Donnellys but the degree to which passages in The Outrageous Tale are similar to those in The Black Donnellys. Mr. Fazakas is not an expert on this issue and the Court does not need expert assistance on it. This included Mr. Fazakas making comparisons between excerpts of the two texts in which he had deleted passages to magnify the apparent similarity. However, while I believe these aspects of his evidence do not assist the Court, I do not believe they disqualify his evidence as a whole or render his reports inadmissible.
[46] The familial relationship is a matter of concern and is a situation that ought be avoided. Overall, however, I conclude that this is not one of the “very clear cases in which the proposed expert is unable or unwilling to provide the court with fair, objective and non-partisan evidence” given the particular circumstances of this matter and Mr. Fazakas’ evidence: White Burgess at para 49. I conclude that Mr. Fazakas’ evidence meets the Mohan threshold of admissibility.
(b) Step 2 of the White Burgess Analysis: Gatekeeping
[47] Even where expert evidence meets this basic threshold for presumptive admissibility, concerns about impartiality continue to play a role at the second discretionary “gatekeeping” stage, where the helpfulness of the evidence is weighed against the potential dangers associated with expert evidence: White Burgess at paras 16, 19, 24, 54; Mohan at p 21. Justice Cromwell sounded a note of caution in respect of this second stage in jurisdictions where the rules do not permit the weighing of evidence on summary judgment motions: White Burgess at para 55. Justice Fuhrer recently concluded that these concerns apply on summary judgment motions brought in the Federal Court under Rule 215: Rallysport Direct LLC v 2424508 Ontario Ltd, 2020 FC 794 at para 20. If weighing of expert evidence is entirely precluded under Rule 215, this would suggest that Mr. Fazakas’ evidence should be admitted based exclusively on the first step of the White Burgess analysis.
[48] The question of weighing the expert evidence also arises given the defendants’ arguments that, even if admitted, the reports should be given little or no weight both because of the independence issue and because of the limited probative value of the evidence. I need not decide these issues since the outcome on these motions is not ultimately affected by the weight given to Mr. Fazakas’ evidence. However, I make the following observations.
[49] First, it is clear that issues of credibility, which can be a central factor in ascribing weight to evidence, should not be decided on a motion for summary judgment: Rallysport (2019) at para 42(F); Newman v Canada, 2016 FCA 213 at para 57; Magonza v Canada (Citizenship and Immigration), 2019 FC 14 at paras 24, 29. In the present case, there are no credibility issues to resolve. Nor is there any contrary expert evidence tendered by the defendants.
[50] Second, despite the general caution against weighing of evidence on a summary judgment motion, the Federal Court of Appeal has recognized that at least some weighing and assessing of evidence can occur. In Canada v 100193 PEI Inc, the Court of Appeal upheld this Court’s decision granting in part a summary judgment motion, finding that there was no basis to interfere with the weight the Court placed on the evidence: Canada v 100193 PEI Inc, 2016 FCA 280 at para 32, aff’g 2015 FC 932, lv app ref’d 2017 CanLII 32942 (SCC). Similarly, in Badawy v Igras, Justice Manson found he did not need to assess credibility since the evidence, even on its face, was not probative of the material facts and issues, a finding upheld by the Court of Appeal: Badawy v Igras, 2017 FC 619 at paras 44–47, aff’d 2019 FCA 153 at paras 3, 7, 10–15. Since probative value can be considered an element of weight, this suggests that at least some form of weighing is permissible on a summary judgment motion: Magonza at para 29.
[51] Had I needed to, and to the extent Rule 215 permits me to, weigh Mr. Fazakas’ reports to assess their admissibility, I would conclude that such a balancing supports their admission. As outlined above, there are aspects of the reports that are unhelpful, such as Mr. Fazakas’ comparisons of the similarity of passages. However, the primary aspect of Mr. Fazakas’ opinion on whether information in The Black Donnellys is fact or fiction is helpful, although ultimately not determinative, in assessing the issues relevant to whether there has been substantial copying. On the other side of the balance, there are no significant concerns in this case regarding the “risks” identified in White Burgess regarding confusion, attornment to opinion, prejudice, junk science, or a contest of experts: White Burgess at paras 16–18.
[52] I conclude Mr. Fazakas’ evidence should be admitted. In doing so, I need not invariably accept his opinions. But I shall consider those opinions as given, and do not need to assess either their credibility or competing expert opinion.
C. The Plaintiffs Have not Established Infringement of Copyright
(1) General principles: fact, fiction, and copyright protection
[53] Copyright subsists in Canada in every original literary work of which the author is a citizen or resident of a treaty country: Copyright Act, ss 2 (“every original literary, dramatic, musical and artistic work”, “treaty country”), 5(1)(a); CCH Canada Ltd v Law Society of Upper Canada, 2004 SCC 13 at paras 8, 14. An “original” work is one that involves the exercise of skill and judgment and is not simply copied from another work: CCH at paras 16, 23, 25, 28.
[54] Copyright subsists whether an original literary work is one of fiction or nonfiction. The Copyright Act makes no distinction between the two. That said, copyright protection does not extend to “facts or ideas” but to the original “expression of ideas”: CCH at paras 8, 14–15, 22; Hager v ECW Press Ltd, [1999] 2 FC 287 (TD) at para 44; Maltz v Witterick, 2016 FC 524 at paras 29–32. This does not mean that literary works on historical or factual subjects are less worthy of copyright protection. It simply means that copyright subsists in the “particular means, method, and manner” in which those facts are presented in the work, rather than in the underlying facts themselves: Maltz at para 31; Hager at paras 45–46. This originality may include the “structure, tone, theme, atmosphere and dialogue” used in presenting the facts: Maltz at para 33.
[55] The principle that there is no copyright in facts is one of long standing. It was affirmed by the Ontario Court of Appeal in Deeks v Wells, [1931] OR 818, 1931 CanLII 157 (CA), aff’d [1933] 1 DLR 353, 1932 CanLII 315 (UK JCPC). There, Ms. Deeks alleged that Mr. Wells infringed copyright in her unpublished historical book titled “The Web” by obtaining the manuscript from the publisher and using it to write his book “The Outline of History,” adopting her general plan and ideas.
[56] The Court of Appeal’s rejection of this claim was based primarily on its conclusion that Ms. Deeks had not established Mr. Wells had access to her unpublished manuscript. However, in concurring reasons Justice Orde noted that even if the work had been published and accessible, Mr. Wells would have been entitled to refer to it in writing his own work:
If the plaintiff’s work “The Web” had already been published and distributed throughout the world as widely, say, as “The Encyclopaedia Britannica,” could an action for an infringement of the plaintiff’s copyright by reason of anything appearing in “The Outline of History” have possibly succeeded, even if it were proved that the defendant Wells had made use of a published copy of “The Web” in writing his book? There can be no copyright in the facts of history or in their chronological sequence. Had “The Web” been published, the defendant Wells was as free to consult and use it in the preparation of his work as the plaintiff was to consult and use “The Encyclopaedia Britannica” or any other publication as a source of information. Infringement of copyright in such cases must, as a general rule, consist of the copying of the words of another in the order in which he has used them. The use of the same historical facts or of the same ideas is not enough.
[Emphasis added.]
[57] The principle that there is no copyright in facts is relevant to the assessment of whether there has been a substantial taking of a work. As copyright means the sole right to “produce or reproduce the work or any substantial part thereof,” any work that reproduces a “substantial part” of a work in which copyright subsists infringes that sole right: Copyright Act, ss 2 (“infringing”), 3(1), 27; Cinar at paras 1, 25. In Cinar, Chief Justice McLachlin described the notion of “substantial part” in terms that relate it directly to the originality of the work:
A substantial part of a work is a flexible notion. It is a matter of fact and degree. “Whether