Cinar Corporation v. Robinson

Cinar Corporation v. Robinson
Collection
Supreme Court Judgments
Date
2013-12-23
Neutral citation
2013 SCC 73
Report
[2013] 3 SCR 1168
Case number
34466, 34467, 34468, 34469
Judges
McLachlin, Beverley; LeBel, Louis; Fish, Morris J.; Abella, Rosalie Silberman; Rothstein, Marshall; Cromwell, Thomas Albert; Moldaver, Michael J.
On appeal from
Quebec
Subjects
Intellectual property
Notes
SCC Case Information: 34466, 34467, 34468, 34469
Decision Content
SUPREME COURT OF CANADA
Citation: Cinar Corporation v. Robinson, 2013 SCC 73, [2013] 3 S.C.R. 1168
Date: 20131223
Docket: 34466, 34467, 34468, 34469
Between:
Cinar Corporation and Les Films Cinar inc.
Appellants
and
Claude Robinson and Les Productions Nilem inc.
Respondents
- and -
France Animation S.A., Christophe Izard, Ravensburger Film + TV GmbH,
RTV Family Entertainment AG, Christian Davin, Ronald A. Weinberg, Ronald A. Weinberg, in his capacity as sole liquidator of the succession of the late Micheline Charest, BBC Worldwide Television, Theresa Plummer-Andrews, Hélène Charest, McRaw Holdings Inc., Videal Gesellschaft Zur Hertellung Von Audiovisuellen Produkten MHB, 3918203 Canada Inc. and Music Canada
Interveners
And Between:
Ronald A. Weinberg and Ronald A. Weinberg, in his capacity as
sole liquidator of the succession of the late Micheline Charest
Appellants
and
Claude Robinson and Les Productions Nilem inc.
Respondents
- and -
Christophe Izard, France Animation S.A., Ravensburger Film + TV GmbH,
RTV Family Entertainment AG, Cinar Corporation, Les Films Cinar inc., Christian Davin, BBC Worldwide Television, Theresa Plummer-Andrews, Hélène Charest, McRaw Holdings Inc., Videal Gesellschaft Zur Hertellung Von Audiovisuellen Produkten MHB, 3918203 Canada Inc. and Music Canada
Interveners
And Between:
Christophe Izard, France Animation S.A.,
Ravensburger Film + TV GmbH and RTV Family Entertainment AG
Appellants
and
Claude Robinson and Les Productions Nilem inc.
Respondents
- and -
Les Films Cinar inc., Cinar Corporation,
Ronald A. Weinberg, Ronald A. Weinberg, in his capacity as sole liquidator of the succession of the late Micheline Charest and Music Canada
Interveners
And Between:
Claude Robinson and Les Productions Nilem inc.
Appellants
and
France Animation S.A., Ravensburger Film + TV GmbH, Videal Gesellschaft Zur Hertellung Von Audiovisuellen Produkten MHB, RTV Family Entertainment AG, Christian Davin, Christophe Izard, Les Films Cinar inc., Cinar Corporation, 3918203 Canada Inc., Ronald A. Weinberg and Ronald A. Weinberg, in his capacity as sole liquidator of the succession of the late Micheline Charest
Respondents
- and -
Music Canada
Intervener
Coram: McLachlin C.J. and LeBel, Fish, Abella, Rothstein, Cromwell and Moldaver JJ.
Reasons for Judgment:
(paras. 1 to 152)
McLachlin C.J. (LeBel, Fish, Abella, Rothstein, Cromwell and Moldaver JJ. concurring)
Claude Robinson and Les Productions Nilem inc., 2013 SCC 73, [2013] 3 S.C.R. 1168
Cinar Corporation and Les Films Cinar inc. Appellants
v.
Claude Robinson and Les Productions Nilem inc. Respondents
and
France Animation S.A., Christophe Izard,
Ravensburger Film + TV GmbH,
RTV Family Entertainment AG,
Christian Davin, Ronald A. Weinberg,
Ronald A. Weinberg, in his capacity as sole liquidator
of the succession of the late Micheline Charest,
BBC Worldwide Television, Theresa Plummer‑Andrews,
Hélène Charest, McRaw Holdings Inc.,
Videal Gesellschaft Zur Hertellung Von Audiovisuellen
Produkten MHB, 3918203 Canada Inc. and Music Canada Interveners
‑ and ‑
Ronald A. Weinberg and Ronald A. Weinberg,
in his capacity as sole liquidator of the succession
of the late Micheline Charest Appellants
v.
Claude Robinson and Les Productions Nilem inc. Respondents
and
Christophe Izard, France Animation S.A.,
Ravensburger Film + TV GmbH,
RTV Family Entertainment AG,
Cinar Corporation, Les Films Cinar inc.,
Christian Davin, BBC Worldwide Television,
Theresa Plummer‑Andrews,
Hélène Charest, McRaw Holdings Inc.,
Videal Gesellschaft Zur Hertellung Von Audiovisuellen
Produkten MHB, 3918203 Canada Inc. and Music Canada Interveners
‑ and ‑
Christophe Izard, France Animation S.A.,
Ravensburger Film + TV GmbH and
RTV Family Entertainment AG Appellants
v.
Claude Robinson and Les Productions Nilem inc. Respondents
and
Les Films Cinar inc., Cinar Corporation, Ronald A. Weinberg,
Ronald A. Weinberg, in his capacity as sole liquidator
of the succession of the late Micheline Charest and
Music Canada Interveners
‑ and ‑
Claude Robinson and Les Productions Nilem inc. Appellants
v.
France Animation S.A., Ravensburger Film + TV GmbH,
Videal Gesellschaft Zur Hertellung Von Audiovisuellen Produkten MHB,
RTV Family Entertainment AG, Christian Davin, Christophe Izard,
Les Films Cinar inc., Cinar Corporation, 3918203 Canada Inc.,
Ronald A. Weinberg and Ronald A. Weinberg,
in his capacity as sole liquidator of the succession
of the late Micheline Charest Respondents
and
Music Canada Intervener
Indexed as: Cinar Corporation v. Robinson
2013 SCC 73
File Nos.: 34466, 34467, 34468, 34469.
2013: February 13; 2013: December 23.
Present: McLachlin C.J. and LeBel, Fish, Abella, Rothstein, Cromwell and Moldaver JJ.
on appeal from the court of appeal for quebec
Intellectual property — Copyright — Infringement — Reproduction of a substantial part of an original work — Whether trial judge failed to follow correct approach in assessing whether a “substantial part” of a work was reproduced — Whether trial judge failed to give sufficient weight to differences between works at issue — Whether trial judge erred in finding that features of original work are protected by the Copyright Act — Whether trial judge erred by relying on inadmissible expert evidence.
Intellectual property — Copyright — Infringement — Damages — Quantum — Disgorgement of profits — Whether Court of Appeal erred in interfering with trial judge’s assessment of profits — Whether liability for disgorgement of profits may be imposed on a solidary basis — Whether Andrews trilogy cap applies to non‑pecuniary damages that do not stem from bodily injury — Whether Court of Appeal erred in interfering with trial judge’s assessment of punitive damages — Whether punitive damages may be awarded on a solidary basis — Copyright Act, R.S.C. 1985, c. C‑42, s. 35 — Civil Code of Québec, S.Q. 1991, c. 64, art. 1621 — Charter of human rights and freedoms, R.S.Q., c. C‑12, s. 49.
R spent years developing an educational children’s television show, “The Adventures of Robinson Curiosity” (“Curiosity”). R drew his inspiration from Daniel Defoe’s novel Robinson Crusoe, as well as from his own life experiences. He developed characters, drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials for his Curiosity project.
From 1985 to 1987, R and his company, Les Productions Nilem inc. (“Nilem”), undertook various initiatives to get the Curiosity project developed. In so doing, R gave a copy of his Curiosity work to W and C, who were directors and officers of Cinar Corporation (“Cinar”). During this same period, a presentation on Curiosity was given to I, a French creator of children’s television shows. Despite the various efforts undertaken by R and his partners, the project failed to attract investors and stalled.
R shelved his project, but did not forget about it. On September 8, 1995, R watched on television the first episode of a new children’s television show, “Robinson Sucroë” (“Sucroë”). He was stunned to see that Sucroë, as he perceived it, was a blatant copy of Curiosity. R subsequently discovered that several parties who had been given access to his Curiosity project, namely Cinar, W, C and I, were also involved in the production of Sucroë.
R and Nilem commenced an action for copyright infringement against Cinar, W, C, and I, and various co‑producers and distributors of Sucroë.
The trial judge concluded that R’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. He found that Cinar, W, C, I, France Animation S.A., Ravensburger Film + TV GmbH and RTV Family Entertainment AG (collectively the “Cinar appellants”) were liable for infringement of copyright. He also held D, the chief executive officer of France Animation at the relevant time, personally liable for the infringement. Finally, the trial judge found that Cinar, W, and C were extra‑contractually liable towards R and Nilem for having violated their obligations of good faith and of loyalty.
The trial judge awarded damages on a solidary basis (the equivalent of “joint and several” liability in the common law) and costs in the amount of $5,224,293: $607,489 in compensatory damages for R’s pecuniary losses stemming from the infringement; $1,716,804 to disgorge the profits earned as a result of the infringement; $400,000 for the psychological harm suffered by R; $1,000,000 in punitive damages; and $1,500,000 for costs on a solicitor‑client basis.
The Court of Appeal upheld the trial judge’s findings on infringement. It confirmed the trial judge’s findings of personal liability for copyright infringement, except for D, against whom the evidence was insufficient in its view.
The Court of Appeal also upheld the trial judge’s award of compensatory damages for R’s pecuniary losses, subject to a minor mathematical correction. It rejected the trial judge’s order for disgorgement of profits against W, C and I because those profits were retained by corporations. It also ordered disgorgement on a joint basis (the equivalent of “several” liability in the common law) rather than solidarily. In addition, the Court of Appeal excluded amounts incorrectly included by the trial judge in the calculation of profits, reducing the amount to be disgorged.
The Court of Appeal held that the cap established in the Andrews trilogy was applicable to the award for psychological suffering and reduced the award to $121,350, which represents 50 percent of the cap’s value at the date of the summons.
In addition, the Court of Appeal reduced the award for punitive damages from $1,000,000 to $250,000, on the ground that punitive damages in Quebec must be moderate, and held that they could not be awarded on a solidary basis. It held Cinar liable for $100,000 in punitive damages, and each of W, C and I liable for $50,000. It also affirmed the trial judge’s award of $1,500,000 for costs on a solicitor‑client basis, but declined to award additional costs on a solicitor‑client basis for the appeal.
Four appeals have been brought from the Court of Appeal’s judgment (in files 34466, 34467, 34468, and 34469). The Cinar appellants appeal the finding of liability for infringement (in files 34466, 34467 and 34468). R and Nilem appeal the reduction in damages and disgorgement of profits ordered by the Court of Appeal (in file 34469).
Held: The appeals in files 34466, 34467 and 34468 should be dismissed, and the appeal in file 34469 should be allowed in part.
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, forms the background against which the arguments of the parties must be considered.
In the present case, the trial judge found that the Cinar appellants copied a number of features from R’s Curiosity and that, considered as a whole, the copied features constituted a substantial part of R’s work. The Cinar appellants argue that instead of applying a holistic approach, the trial judge should have applied a three‑step approach requiring him to (1) determine what elements of Curiosity were original, within the meaning of the Copyright Act ; (2) exclude non‑protectable features of R’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.
As a general matter, it is important to not conduct the substantiality analysis by dealing with the copied features piecemeal. The approach proposed by the Cinar appellants would risk dissecting R’s work into its component parts. The “abstraction” of R’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 R’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 R’s skill and judgment expressed in his work as a whole. The trial judge accordingly did not err by failing to follow the three‑step approach advocated by the Cinar appellants.
Likewise, the trial judge did not err by engaging in a qualitative and holistic assessment of the similarities between the works, which took into account the relevant similarities and differences between the works. The question of whether there has been substantial copying focuses on whether the copied features constitute a substantial part of the plaintiff’s work — not whether they amount to a substantial part of the defendant’s work. The alteration of copied features or their integration into a work that is notably different from the plaintiff’s work does not necessarily preclude a claim that a substantial part of a work has been copied.
In essence, the aspects of the trial judge’s reasons that the Cinar appellants take issue with are findings of mixed fact and law. They invite this Court to embark on a fresh assessment of the features copied from Curiosity. However, they have failed to demonstrate palpable or overriding errors in the trial judge’s findings on substantiality.
The Cinar appellants further argue that the trial judge based the bulk of his findings on the issue of substantial copying on inadmissible expert evidence. For expert evidence to be admitted at trial, it must (a) be relevant; (b) be necessary to assist the trier of fact; (c) not offend any exclusionary rule; and (d) involve a properly qualified expert. These criteria apply to trials for copyright infringement, as they do in other intellectual property cases.
The Cinar appellants argue that the second criterion — necessity of the evidence — is not met in the case at hand. The expert evidence was not necessary to assist the court, they say, because the question of whether a substantial part has been copied must be assessed from the perspective of the lay person in the intended audience for the works at issue.
The perspective of the lay person in the intended audience for the works at issue is a useful one. It has the merit of keeping the analysis of similarities concrete and grounded in the works themselves, rather than in esoteric theories about the works. However, the question always remains whether a substantial part of the plaintiff’s work was copied. This question 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. In the present case, the necessity criterion of the test for the admissibility of expert evidence is satisfied.
With respect to damages, R and Nilem seek inter alia to have the trial judge’s entire award of profits reinstated. Regarding profits from the Sucroë soundtrack, they argue that there is a causal link between the infringement and the profits derived from the soundtrack and that the trial judge therefore correctly included them as part of his award of profits. The apportionment of profits between infringing and non‑infringing components of a work is essentially a factual determination which is subject to judicial discretion. An appellate court may only disturb the trial judge’s findings on apportionment if there are errors of law or palpable and overriding errors of fact. The trial judge did not make a reviewable error in concluding that it was inappropriate to apportion profits to the soundtrack as a non‑infringing component of the work. The Court of Appeal accordingly erred by interfering with the trial judge’s conclusion in this regard.
As for the trial judge’s characterization of the payment from Ravensburger Film + TV GmbH to France Animation S.A. as revenue, there is agreement with the Court of Appeal that this characterization constitutes a palpable and overriding error and that this amount should be removed from the revenues taken into account when calculating the profits generated by Sucroë. However, in connection with the characterization of the payment due by Cinar to a partnership called Jaffa Road as revenue, the trial judge did not err in this regard and this amount should not be deducted as an expense when calculating the profits from Sucroë.
On the issue of liability for disgorgement of profits under the Copyright Act , the Court of Appeal was correct in concluding that the trial judge erred in ordering disgorgement against all infringers on a solidary basis. Section 35 of 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. The latter is not intended to compensate the plaintiff and is not subject to the principles that govern general damages awarded under Quebec’s law of extra‑contractual liability, whose aim is compensatory. Disgorgement under s. 35 of the Copyright Act goes no further than is necessary to prevent each individual defendant from retaining a wrongful gain. Defendants cannot be held liable for the gains of co‑defendants by imposing liability for disgorgement on a solidary basis. For the same reasons, W, C, and I are not personally liable to disgorge profits. In addition, the Court of Appeal’s apportionment with respect to the disgorgement of profits should be maintained.
In connection with non‑pecuniary damages, and in particular whether the Andrews trilogy cap should be applied in the present case, the scope of application of the cap beyond non‑pecuniary damages stemming from bodily injury should not be extended. Furthermore, R’s non‑pecuniary damages cannot be characterized as stemming from bodily injury, within the meaning of art. 1607 of the Civil Code of Québec. It is more appropriate to characterize R’s psychological suffering as a non‑pecuniary damage stemming from material injury. Indeed, the infringement of copyright was a breach of R’s property rights. It is the initial breach, rather than the consequences flowing from that breach, which serves to characterize the type of injury suffered. The Court of Appeal accordingly erred in applying the Andrews trilogy cap in the present case.
In terms of assessing quantum for this injury, there is agreement with the trial judge that R’s non‑pecuniary damages are analogous to those claimed by a victim of defamation. The trial judge had the advantage of observing R in court over a long period of time and was well placed to conduct a personalized evaluation of his non‑pecuniary damages. He made no palpable and overriding error in his assessment of R’s non‑pecuniary damages.
As regards punitive damages, they cannot be awarded on a solidary basis. This Court has recognized that the punitive damages regime under the Charter is autonomous from the extra‑contractual civil liability regime established under the Civil Code of Québec. Article 1526 of the Civil Code of Québec applies to extra‑contractual fault causing injury and cannot ground the solidarity of punitive damages awarded under the Charter. Furthermore, awarding punitive damages on a solidary basis would be inconsistent with the principles set forth in art. 1621 of the Civil Code of Québec, which expressly requires that the objectives of punitive damages — prevention, deterrence (both specific and general), and denunciation of acts that are particularly reprehensible in the opinion of the justice system — be taken into account when awarding them. Both the objectives of punitive damages and the factors relevant to assessing them suggest that awards of punitive damages must be individually tailored to each defendant against whom they are ordered. This requirement of individualization militates against awarding punitive damages on a solidary basis.
In addition, the Court of Appeal was correct to re‑assess the quantum of punitive damages, although it did not give sufficient weight to the gravity of the conduct in this case. Indeed, Cinar, W, C, and I consistently and contemptuously denied having access to R’s work, and disparaged R’s claims that they had copied his work. The impact of this conduct on R was equally serious. It deprived him not only of a source of revenue, but also of his sense of proprietorship over a project that had deep personal significance for him. This said, punitive damages must be awarded with restraint. Article 1621 of the Civil Code of Québec expressly provides that the award of punitive damages “may not exceed what is sufficient to fulfil their preventive purpose”. An amount of $500,000 reaches an appropriate balance between the overarching principle of restraint that governs these damages, on the one hand, and the need to deter conduct of this gravity, on the other. The Court of Appeal held Cinar liable for two‑fifths of the amount of punitive damages, and each of W, C, and I liable for one‑fifth, and this represents a reasonable apportionment in the circumstances.
Cases Cited
Distinguished: Andrews v. Grand & Toy Alberta Ltd., [1978] 2 S.C.R. 229; Thornton v. School District No. 57 (Prince George), [1978] 2 S.C.R. 267; Arnold v. Teno, [1978] 2 S.C.R. 287; referred to: Massie & Renwick Ltd. v. Underwriters’ Survey Bureau Ltd., [1940] S.C.R. 218; Théberge v. Galerie d’Art du Petit Champlain inc., 2002 SCC 34, [2002] 2 S.C.R. 336; Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2012 SCC 36, [2012] 2 S.C.R. 326; Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34, [2012] 2 S.C.R. 231; Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35, [2012] 2 S.C.R. 283; CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339; Ladbroke (Football), Ltd. v. William Hill (Football), Ltd., [1964] 1 All E.R. 465; Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2001] 1 All E.R. 700; Nichols v. Universal Pictures Corporation, 45 F.2d 119 (1930); Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235; Baigent v. The Random House Group Ltd., [2007] EWCA Civ 247, [2007] F.S.R. 24; Delrina Corp. v. Triolet Systems Inc. (2002), 58 O.R. (3d) 339; Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (1992); Productions Avanti Ciné‑Vidéo Inc. v. Favreau (1999), 177 D.L.R. (4th) 568, leave to appeal refused, [2000] 1 S.C.R. xi; R. v. Mohan, [1994] 2 S.C.R. 9; Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R. 387; Preston v. 20th Century Fox Canada Ltd. (1990), 33 C.P.R. (3d) 242, aff’d (1993), 53 C.P.R. (3d) 407; Arbique v. Gabriele, [1998] J.Q. no 3794 (QL), aff’d 2003 CanLII 16298; Mentmore Manufacturing Co. v. National Merchandising Manufacturing Co. (1978), 89 D.L.R. (3d) 195; Longpré v. Thériault, [1979] C.A. 258; Sheldon v. Metro‑Goldwyn Pictures Corporation, 106 F.2d 45 (1939); Wellcome Foundation Ltd. v. Apotex Inc., [2001] 2 F.C. 618; Lubrizol Corp. v. Imperial Oil Ltd., [1997] 2 F.C. 3; Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34, [2004] 1 S.C.R. 902; Quebec (Public Curator) v. Syndicat national des employés de l’hôpital St‑Ferdinand, [1996] 3 S.C.R. 211; Lindal v. Lindal, [1981] 2 S.C.R. 629; Hill v. Church of Scientology of Toronto, [1995] 2 S.C.R. 1130; Snyder v. Montreal Gazette Ltd., [1988] 1 S.C.R. 494; Schreiber v. Canada (Attorney General), 2002 SCC 62, [2002] 3 S.C.R. 269; Landry v. Audet, 2011 QCCA 535 (CanLII), leave to appeal refused, [2011] 3 S.C.R. v; Gauthier v. Beaumont, [1998] 2 S.C.R. 3; Stations de la Vallée de Saint‑Sauveur inc. v. M.A., 2010 QCCA 1509, [2010] R.J.Q. 1872; Société Radio‑Canada v. Gilles E. Néron Communication Marketing inc., [2002] R.J.Q. 2639, aff’d 2004 SCC 53, [2004] 3 S.C.R. 95; Construction Denis Desjardins inc. v. Jeanson, 2010 QCCA 1287 (CanLII); Markarian v. Marchés mondiaux CIBC inc., 2006 QCCS 3314 (CanLII); Genex Communications inc. v. Association québécoise de l’industrie du disque, du spectacle et de la vidéo, 2009 QCCA 2201, [2009] R.J.Q. 2743; Solomon v. Québec (Procureur général), 2008 QCCA 1832, [2008] R.J.Q. 2127; de Montigny v. Brossard (Succession), 2010 SCC 51, [2010] 3 S.C.R. 64; Richard v. Time Inc., 2012 SCC 8, [2012] 1 S.C.R. 265; Whiten v. Pilot Insurance Co., 2002 SCC 18, [2002] 1 S.C.R. 595.
Statutes and Regulations Cited
Charter of human rights and freedoms, R.S.Q., c. C‑12, ss. 1, 4, 6, 49.
Civil Code of Québec, S.Q. 1991, c. 64, arts. 1525, 1526, 1607, 1618, 1619, 1621, 2846, 2849.
Copyright Act, R.S.C. 1985, c. C‑42, ss. 2 “infringing”, 3, 5, 27(1), 34 [am. 2012, c. 20, s. 43], 34.1, 35.
Authors Cited
Baudouin, Jean‑Louis, et Patrice Deslauriers. La responsabilité civile, 7e éd., vol. I, Principes généraux. Cowansville, Qué.: Yvon Blais, 2007.
Baudouin, Jean‑Louis, et Pierre‑Gabriel Jobin. Les obligations, 7e éd. par Pierre‑Gabriel Jobin et Nathalie Vézina. Cowansville, Qué.: Yvon Blais, 2013.
Clermont, Benoît. “Les compilations et la Loi sur le droit d’auteur : leur protection et leur création” (2006), 18 C.P.I. 219.
Gardner, Daniel. Le préjudice corporel, 3e éd. Cowansville, Qué.: Yvon Blais, 2009.
Gardner, Daniel. “Revue de la jurisprudence 2011 en droit des obligations” (2012), 114 R. du N. 63.
Judge, Elizabeth F., and Daniel J. Gervais. Intellectual Property: The Law in Canada, 2nd ed. Toronto: Carswell, 2011.
Karim, Vincent. Les obligations, 3e éd., vol. 2. Montréal: Wilson & Lafleur, 2009.
Lluelles, Didier, et Benoît Moore. Droit des obligations, 2e éd. Montréal: Thémis, 2012.
McKeown, John S. Fox on Canadian Law of Copyright and Industrial Designs, 4th ed., vol. 1. Toronto: Carswell, 2012 (loose-leaf updated 2013, release 4).
Tarantino, Bob. “‘I’ve Got This Great Idea for a Show. . .’ ― Copyright Protection for Television Show and Motion Picture Concepts and Proposals” (2004), 17 I.P.J. 189.
Vaver, David. Intellectual Property Law: Copyright, Patents, Trade‑marks, 2nd ed. Toronto: Irwin Law, 2011.
APPEALS from a judgment of the Quebec Court of Appeal (Thibault, Morin and Doyon JJ.A.), 2011 QCCA 1361, [2011] R.J.Q. 1415, 108 C.P.R. (4th) 165, [2011] Q.J. No. 9469 (QL), 2011 CarswellQue 15414, SOQUIJ AZ‑50771854, setting aside in part a decision of Auclair J., 2009 QCCS 3793, [2009] R.J.Q. 2261, 83 C.P.R. (4th) 1, [2009] R.R.A. 1135, [2009] J.Q. no 8395 (QL), 2009 CarswellQue 8380, SOQUIJ AZ‑50572488. Appeals in files 34466, 34467 and 34468 dismissed. Appeal in file 34469 allowed in part.
William Brock and Cara Cameron, for the appellants (34466)/respondents (34469) Cinar Corporation and Les Films Cinar inc. and for the respondent (34469) 3918203 Canada Inc.
Guy Régimbald, Normand Tamaro, Gilles M. Daigle and Marie‑Catherine Deschênes, for the respondents (34466, 34467, 34468)/appellants (34469) Claude Robinson and Les Productions Nilem inc.
Pierre Y. Lefebvre and Alain Y. Dussault, for the appellants (34468)/respondents (34469) Christophe Izard, France Animation S.A., Ravensburger Film + TV GmbH and RTV Family Entertainment AG and for the respondent (34469) Videal Gesellschaft Zur Hertellung Von Audiovisuellen Produkten MHB.
Guy J. Pratte, Daniel Urbas and Marc‑André Grou, for the respondent (34469) Christian Davin.
Raynold Langlois, Q.C., Dimitri Maniatis, Jean‑Patrick Dallaire and Fabrice Vil, for the appellants (34467)/respondents (34469) Ronald A. Weinberg and Ronald A. Weinberg, in his capacity as sole liquidator of the succession of the late Micheline Charest.
Barry B. Sookman and Daniel G. C. Glover, for the intervener Music Canada.
The judgment of the Court was delivered by
[1] The Chief Justice — Canadian law protects the exclusive right of copyright owners to reproduce or to authorize the reproduction of their works. The unauthorized reproduction of a substantial part of an original work constitutes copyright infringement, for which a copyright owner can seek various remedies. The present appeals require this Court to determine whether a substantial part of a work has been reproduced, to examine the role of expert evidence in infringement cases, and to assess whether the trial judge committed reviewable errors in his award of damages.
[2] I conclude that copyright was infringed and would order compensatory damages, disgorgement of profits, and punitive damages.
I. Background
[3] Claude Robinson was a dreamer. He spent years meticulously crafting an imaginary universe for an educational children’s television show, “The Adventures of Robinson Curiosity” (“Curiosity”). Robinson drew his inspiration from Daniel Defoe’s novel Robinson Crusoe, as well as from his own life experiences. He developed a character ― Robinson Curiosity ― who lives on a tropical island and must learn to interact with its other inhabitants. From 1982 onwards, he drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials. In October 1985, the Copyright Office issued a registration certificate identifying Robinson as the author of Curiosity and Les Productions Nilem inc. (“Nilem”) ― a corporation of which Robinson is the sole director and shareholder ― as the owner of the rights to the literary work.
[4] From 1985 to 1987, Robinson and Nilem undertook various initiatives to get the Curiosity project developed. Of particular relevance to this appeal, in 1986 Cinar Corporation (“Cinar”) was retained by one of Robinson’s production partners, Pathonic International Inc. (“Pathonic”), as a consultant to promote the project in the United States and to offer general production advice. Ronald Weinberg and his late wife Micheline Charest, who were directors and officers of Cinar, became involved in the project. Robinson gave Weinberg and Charest a copy of his Curiosity work. Ultimately, nothing came of Cinar’s efforts to find financial partners for the project in the United States.
[5] In 1987, Robinson partnered with Les Productions SDA ltée (“SDA”) to produce the television show. Nilem and SDA set up two corporations, Curious Island Productions Inc. and Curious Island Enterprises Inc., which they intended to use as vehicles for the production.
[6] During that same year, Robinson and SDA participated in a television industry convention held at Cannes, in France. At this convention, they allegedly gave a presentation on Curiosity to Christophe Izard, a French creator of children’s television shows.
[7] Despite the various efforts undertaken by Robinson and his partners, the project failed to attract investors and stalled. Curious Island Productions and Curious Island Enterprises were dissolved on December 12, 1990.
[8] Robinson shelved his project, but did not forget about it. In 1995, he explored the possibility of converting his Curiosity project into interactive educational software for children. However, these fresh efforts were cut short when, on September 8, 1995, Robinson watched on television the first episode of a new children’s television show, “Robinson Sucroë” (“Sucroë”). He was stunned to see that Sucroë, as he perceived it, was a blatant copy of Curiosity.
[9] In Robinson’s view, the characters and environment depicted in Sucroë closely tracked his work. Like Curiosity, Sucroë features a bearded, Robinson Crusoe-inspired protagonist who wears glasses and a straw hat. In both works, the protagonist lives on an island and interacts with other characters. There are however notable differences between the works. Many of the “side-kicks” in Curiosity are animals, whereas in Sucroë they are predominantly humans. Also, Sucroë, unlike Curiosity, features a band of marauding pirates as “villains”.
[10] Robinson discovered that several parties who had been given access to his Curiosity project, namely Cinar, Weinberg, Charest, and Izard, were also involved in the production of Sucroë. He concluded that Sucroë was not an independent creation, but rather had been developed by copying Curiosity. He and Nilem commenced an action for copyright infringement against Cinar, Weinberg, Charest, Izard, and various co-producers and distributors of Sucroë. They also claimed damages under the rules of extra-contractual liability, contending that Cinar, Weinberg, and Charest had breached their obligations of good faith and loyalty under the contract for services that they concluded with Pathonic, and that in doing so they knowingly caused damages to Robinson and Nilem.
[11] The trial lasted 83 days and resulted in the production of a voluminous evidentiary record. After considering the testimony of over 40 witnesses and 4 experts, as well as extensive documentary and audio-visual evidence, the trial judge concluded that Robinson’s Curiosity was an original work protected by copyright, that the creators of Sucroë had copied Curiosity, and that the features reproduced in Sucroë represented a substantial part of Curiosity. He found that Cinar, Weinberg, Charest, Izard, France Animation S.A., Ravensburger Film + TV GmbH and RTV Family Entertainment AG (collectively referred to as the “Cinar appellants” in these reasons) were liable for infringement of copyright. He also held Christian Davin, the chief executive officer of France Animation at the relevant time, personally liable for the infringement. Finally, the trial judge found that Cinar, Weinberg, and Charest were extra-contractually liable towards Robinson and Nilem for having violated their obligations of good faith and of loyalty: 2009 QCCS 3793, [2009] R.J.Q. 2261.
[12] The trial judge awarded damages on a solidary basis (the equivalent of “joint and several” liability in the common law) and costs in the amount of $5,224,293: $607,489 in compensatory damages for Robinson’s pecuniary losses stemming from the infringement; $1,716,804 to disgorge the profits earned as a result of the infringement; $400,000 for the psychological harm suffered by Robinson; $1,000,000 in punitive damages; and $1,500,000 for costs on a solicitor-client basis.
[13] The Court of Appeal upheld the trial judge’s findings on infringement. It confirmed the trial judge’s findings of personal liability for copyright infringement, except for Davin, against whom the evidence was insufficient in its view: 2011 QCCA 1361, 108 C.P.R. (4th) 165.
[14] The Court of Appeal upheld the trial judge’s award of compensatory damages for Robinson’s pecuniary losses, subject to a minor mathematical correction. It rejected the trial judge’s order for disgorgement of profits against Weinberg, Charest, and Izard because those profits were retained by corporations. It also ordered disgorgement on a joint basis (the equivalent of “several” liability in the common law) rather than solidarily. In addition, the Court of Appeal excluded amounts incorrectly included by the trial judge in the calculation of profits, reducing the amount to be disgorged.
[15] The Court of Appeal held that the cap established in the Andrews trilogy (Andrews v. Grand & Toy Alberta Ltd., [1978] 2 S.C.R. 229, Thornton v. School District No. 57 (Prince George), [1978] 2 S.C.R. 267, and Arnold v. Teno, [1978] 2 S.C.R. 287) was applicable to the award for psychological suffering and reduced the award to $121,350, which represents 50 percent of the cap’s value at the date of the summons.
[16] The Court of Appeal reduced the award for punitive damages from $1,000,000 to $250,000, on the ground that punitive damages in Quebec must be moderate, and held that they could not be awarded on a solidary basis. It held Cinar liable for $100,000 in punitive damages, and each of Weinberg, Charest, and Izard liable for $50,000.
[17] The Court of Appeal held that interest and the additional indemnity (arts. 1618 and 1619 of the Civil Code of Québec, S.Q. 1991, c. 64 (“CCQ”)) on the award of compensatory damages should be computed as of July 16, 1996, and as of July 1, 2001, for the award of profits. It also affirmed the trial judge’s award of $1,500,000 for costs on a solicitor-client basis, but declined to award additional costs on a solicitor-client basis for the appeal.
[18] Four appeals have been brought from the Court of Appeal’s judgment (in files 34466, 34467, 34468, and 34469). The Cinar appellants appeal the finding of liability for infringement. Robinson and Nilem appeal the reduction in damages and disgorgement of profits ordered by the Court of Appeal.
II. Issues
[19] The appeals raise a number of issues, which I will address as follows:
A. The Standing of Robinson and Nilem
B. The Infringement of Copyright
C. The Personal Liability of Weinberg, Charest, and Davin for Infringement
D. The Extra-contractual Liability of Cinar, Weinberg, and Charest
E. Disgorgement of Profits
F. Non-pecuniary Damages
G. Punitive Damages
III. Analysis
A. The Standing of Robinson and Nilem
[20] The appellant Weinberg argues that neither Robinson nor Nilem has standing to bring an action for copyright infringement because Robinson assigned all of his rights in Curiosity to Nilem, and Nilem thereafter assigned those rights to Curious Island Enterprises. He argues that, as a result of these assignments, neither Robinson nor Nilem retains any rights in Curiosity.
[21] Weinberg bears the burden of proving the loss of copyright: s. 34.1 of the Copyright Act, R.S.C. 1985, c. C-42 (“Copyright Act ” or “Act”) (s. 34 at the time this action was commenced); Massie & Renwick Ltd. v. Underwriters’ Survey Bureau Ltd., [1940] S.C.R. 218, at pp. 233-34. In my view, he has failed to discharge this burden. On the record before this Court, I would not interfere with the conclusion of the courts below that Robinson and Nilem were co-owners of the rights to Curiosity. And I agree with the courts below that any rights transferred by Nilem to Curious Island Enterprises reverted to Nilem. The 1987 shareholders’ agreement by which Nilem transferred its rights to Curious Island Enterprises contained a resolutory clause pursuant to which the rights would revert back to Nilem if Curious Island Enterprises was dissolved, and Curious Island Enterprises was indeed dissolved on December 12, 1990.
[22] Consequently, Robinson and Nilem have standing to bring their action.
B. The Infringement of Copyright
(1) The Scope of the Protection Afforded by the Copyright Act
[23] The Copyright Act strikes “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator”: Théberge v. Galerie d’Art du Petit Champlain inc., 2002 SCC 34, [2002] 2 S.C.R. 336, at para. 30; see also Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2012 SCC 36, [2012] 2 S.C.R. 326, at paras. 8-11; Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34, [2012] 2 S.C.R. 231, at paras. 7-8; Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35, [2012] 2 S.C.R. 283, at para. 40. It seeks to ensure that an a