In the last decade, the Supreme Court of Canada has canvassed many important issues in copyright law including the scope of the rights of reproduction and authorization, what makes a work original, and how to apply the fair dealing defense. In its decision released yesterday in Cinar Corporation v. Robinson, 2013 SCC 73, a unanimous Supreme Court released an important precedent dealing with many other core areas of copyright including the framework for how to assess if a “substantial part” of a work has been reproduced, the assessment of damages for infringement including accounting of profits, non-pecuniary damages and punitive damages, the use of experts in a copyright case, the vicarious liability of directors for infringement, and whether copyright is protected by the Quebec Charter of human rights and freedoms. For copyright lawyers, this case is a goldmine – a treasure trove -of important copyright holdings by the Supreme Court.
The case involved an educational children’s television show, “The Adventures of Robinson Curiosity” (“Curiosity”) created by Robinson. He developed characters, drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials for his Curiosity project. The infringement action was against Cinar and several of its officers and directors and co-producers who produced and distributed a children’s show named “Robinson Sucroë” (“Sucroë”). Robinson claimed that Sucroë was a blatant copy of Curiosity. His claim, however, was largely based on the presence of many non-literal similarities including similarities in characters such as their personalities and interactions, and their environment. He sued for infringement and was awarded substantial damages by a Quebec Court. The decision was mostly affirmed by the Quebec Court of Appeal.
A summary of the major holdings of the Court is set out below.
The Scope of the Protection Afforded by the Copyright Act
It is a basic principle of copyright law that the Act protects only original expression in a work and not mere ideas, stock devices, or elements in the public domain. If a substantial part of the original expression is reproduced, infringement may result.[i] The Court re-affirmed these principles stating the following:
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… It seeks to ensure that an author will reap the benefits of his efforts, in order to incentivize the creation of new works. However, it does not give the author a monopoly over ideas or elements from the public domain, which all are free to draw upon for their own works. For example, “[t]he general stock of incidents in fiction or drama is free for all to use ― a substantial part of everyone’s culture, not of any one individual’s work”: D. Vaver, Intellectual Property Law: Copyright, Patents, Trade-marks (2nd ed. 2011), at p. 182.
The Act protects original literary, dramatic, musical, and artistic works: s. 5. It protects the expression of ideas in these works, rather than ideas in and of themselves: CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13,  1 S.C.R. 339, at para. 8. An original work is the expression of an idea through an exercise of skill and judgment: CCH, at para. 16. Infringement consists of the unauthorized taking of that originality…
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.
It is also a fundamental tenet that copyright does not protect all copying from a work. Unless all or a substantial part of a work is reproduced the copying will not be considered as infringing. A substantial part is measured by its quality rather than its quantity. Whether qualitatively a substantial part of a work has been taken is assessed by determining whether a substantial portion of the originality in the work, a substantial portion of the author’s skill and judgment expressed in the work, has been copied.
However, the Act does not protect every “particle” of an original work, “any little piece the taking of which cannot affect the value of [the] work as a whole”: Vaver, at p. 182. Section 3 of the Copyright Act provides that the copyright owner has the sole right to reproduce “the work or any substantial part thereof”.
A substantial part of a work is a flexible notion. It is a matter of fact and degree. “Whether a part is substantial must be decided by its quality rather than its quantity”: Ladbroke (Football), Ltd. v. William Hill (Football), Ltd.,  1 All E.R. 465 (H.L.), at p. 481, per Lord Pearce. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein.
It is also fundamental that copyright infringement can be made out by literal or non-literal copying of a substantial part of a work.
A substantial part of a work is not limited to the words on the page or the brushstrokes on the canvas. The Act protects authors against both literal and non-literal copying, so long as the copied material forms a substantial part of the infringed work. As the House of Lords put it,
. . . the “part” which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part. . . . [T]he original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original.
(Designers Guild Ltd. v. Russell Williams (Textiles) Ltd.,  1 All E.R. 700 (H.L.), at p. 706, per Lord Hoffmann; see also Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2nd Cir. 1930), per Learned Hand J.
The Standard of Review
Before delving into the merits of the case, the Court confirmed that the standard of review on a finding of whether a substantial part of a work has been infringed is an error of law or palpable and overriding errors.
The Correct Approach to Assessing Whether a “Substantial Part” of a Work is Reproduced
Until the Robinson case, there were different approaches used by the courts in Canada for comparing the infringed and the allegedly infringing works to determine if a substantial part had been copied.
Some cases had assessed whether there is an “objective similarity” between the two works. This test examines whether there are similarities in the expression of an idea and not merely a representation of a general idea in a different form. It was formulated in the leading UK case, Francis Day & Hunter Ltd. v. Bron,  Ch. 587 (Eng. C.A.). In the case of artistic works, a test that was sometimes applied was a purely visual one. The two works are compared oculis subjecta fidelibus.[ii] In Hanfstaengl v. Baines & Co. the English House of Lords applied a test that requires that the two works be compared as a whole:
The inquiry involves a comparison between two works. The idea of the original – the subject and the treatment of it in all its details [...] All that can I think be said is that the question of infringement of the right depends on the degree of resemblance. It must be solved by taking each of the works to be compared as a whole and determining whether there is not merely a similarity or resemblance in some leading feature or in certain of the details, but whether there is such a degree of similarity as would lead one to say that the alleged infringement is a copy or reproduction of the original or design – having adopted its essential features and substance.[iii]
The Ontario Court of Appeal in the Delrina case,[iv] had favorably commented on the “abstraction-filtration-comparison” methodology, a methodology that is commonly applied in computer program infringement cases in the U.S. to weed out unprotectable portions of a work before comparing the two works.[v] The appellants had argued that this test should have been applied by the trial judge.
The Court did not rule out that abstraction-filtration-comparison methodology could be applied in a different type of case, such as a computer program infringement case. However, instead the Supreme Court adopted principles from the leading UK cases requiring a “qualitative and holistic” approach to assessing substantiality. According the Court:
The trial judge found that the Cinar appellants copied a number of features from Robinson’s Curiosity, including the visual appearance of the main protagonist, the personality traits of the main protagonist and of other characters, visual aspects of the setting, and recurring scenographic elements. He concluded that, considered as a whole, the copied features constituted a substantial part of Robinson’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 Robinson’s work (such as ideas, elements drawn from the public domain, and generic elements commonplace in children’s television shows); and (3) compare what remains of Curiosity after this “weeding-out” process to Sucroë, and determine whether a substantial part of Curiosity was reproduced.
The approach proposed by the Cinar appellants is similar to the “abstraction-filtration-comparison” approach used to assess substantiality in the context of computer software infringement in the United States: see Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2nd Cir. 1992); B. Clermont, “Les compilations et la Loi sur le droit d’auteur: leur protection et leur creation” (2006), 18 C.P.I. 219, at p. 237; B. Tarantino, “ ‘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, at pp. 199-200. It has been discussed, though not formally adopted, in Canadian jurisprudence: Delrina Corp., at paras. 43-47. I do not exclude the possibility that such an approach might be useful in deciding whether a substantial part of some works, for example computer programs, has been copied. But many types of works do not lend themselves to a reductive analysis. Canadian courts have generally adopted a qualitative and holistic approach to assessing substantiality. “The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff’s right”: J.S. McKeown, Fox on Canadian Law of Copyright and Industrial Designs (loose-leaf), at p. 21-16.4 (emphasis added).
As a general matter, it is important to not conduct the substantiality analysis by dealing with the copied features piecemeal: Designers Guild, at p. 705, per Lord Hoffman. The approach proposed by the Cinar appellants would risk dissecting Robinson’s work into its component parts. The “abstraction” of Robinson’s work to the essence of what makes it original and the exclusion of non-protectable elements at the outset of the analysis would prevent a truly holistic assessment. This approach focuses unduly on whether each of the parts of Robinson’s work is individually original and protected by copyright law. Rather, the cumulative effect of the features copied from the work must be considered, to determine whether those features amount to a substantial part of Robinson’s skill and judgment expressed in his work as a whole.
Despite declining to apply the abstraction-filtration-comparison test, the Court noted that the trial court had correctly taken the unprotectable elements of Robison’s work into account in doing the comparison between the two works.
The trial judge engaged in a qualitative and holistic assessment of the similarities between the works, which took into account the relevant similarities and differences between the works. For example, he gave little weight to similarities that were due to the generic island setting of both works: the fact that beaches, luxuriant vegetation, and bananas are present in both works was, at best, a “minor” similarity (paras. 621 and 631). He also gave little weight to the alleged similarities between Gladys, a female character in Sucroë, and Gertrude, a character in Curiosity (paras. 577-81). He examined whether Robinson Sucroë could be said to be as curious as Robinson Curiosity, and recognized that curiosity was a less predominant personality trait in Sucroë than it was in Curiosity (paras. 529-31). He concluded that, despite any differences between the works, it was still possible to identify in Sucroë features copied from Curiosity and that these features constituted a substantial part of Robinson’s work. The trial judge did not err in approaching the matter in this way.
Relevance of differences between the copyright and allegedly infringing work
Under well established law, when examining substantiality the focus is on the similarities and not on the differences. A defendant is not exonerated from infringement by adding substantial new features to its work. The dissimilarities are irrelevant if in other respects a substantial part of the original work has been copied.[vi]
However, since the converse of similar is different, the courts regularly as part of the substantiality analysis evaluate the similarities and differences to determine if the part of the plaintiff’s work that is alleged to have been copied is really manifest or evident in the defendant’s work or is really just a different mode of expressing the same idea. If the points of dissimilarity not only exceed the points of similarity, but indicate that the remaining points of similarity are of minimal importance to the plaintiff’s work, then there can be no infringement.[vii]
The respondents contended that the trial judge had failed to take into account the substantial differences between the two works in assessing infringement. The Court, consistent with well established law, noted that what is important in a copyright case is the extent of the similarities not the extent of the differences. The Court also noted that the differences could be so extensive as to make the allegedly infringing work a new original work.
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: Vaver, at p. 186; E. F. Judge and D. J. Gervais, Intellectual Property: The Law in Canada (2nd ed. 2011), at p. 211. 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. As the Copyright Act states, infringement includes “any colourable imitation” of a work: definition of “infringing”, s. 2.
This is not to say that differences are irrelevant to the substantiality analysis. If the differences are so great that the work, viewed as a whole, is not an imitation but rather a new and original work, then there is no infringement. As the Court of Appeal put it, “the differences may have no impact if the borrowing remains substantial. Conversely, the result may also be a novel and original work simply inspired by the first. Everything is therefore a matter of nuance, degree, and context” (para. 66).
An infringing work may also be an original work. Accordingly, this passage by the Court might be interpreted to mean that substantial differences in two works may suggest that the defendant has not reproduced all or any substantial part of the allegedly infringed work.
The scope of copyright in a TV series
The appellants argued that even though there had been coping in creating Sucroë, what was copied were unprotectable ideas or stock devices or materials that were otherwise not original or in the public domain. The Court rejected these arguments finding that the trial judge had based his decision on copying expression of ideas and not the ideas themselves.
I turn first to the argument that Sucroë merely reproduced the idea of a children’s television show about a Robinson Crusoe-inspired character living on a tropical island, as opposed to Robinson’s expression of that idea. I cannot accept this contention. The trial judge clearly grounded his finding of copying of a substantial part not in the idea behind Curiosity, but in the way Robinson expressed that idea. He concluded that the overall architecture of Robinson’s submission for a television show was copied. He found that the graphic appearance and several aspects of the personality of Curiosity’s protagonist were copied; the personalities of the secondary characters that gravitate around Curiosity’s protagonist were copied; and the graphic appearance of the makeshift village that these characters inhabit was also copied in part (paras. 685 and 824-26). These findings are not confined to the reproduction of an abstract idea; they focus on the detailed manner in which Robinson’s ideas were expressed.
This leaves the second argument ― the suggestion that to the extent that the characters and setting of Sucroë replicated those found in Curiosity, these are generic elements that are not protected by copyright law. The story of a man marooned on an island interacting with animals, native inhabitants, and the environment is archetypal and has been reproduced for centuries, the Cinar appellants assert.
Again, the trial judge’s findings refute this contention. He found that Curiosity was an original work, within the meaning of the Copyright Act. He based this not on the generic nature of the characters, but on their distinct visual appearance and particular personalities, which were the product of Robinson’s skill and judgment. Nor was Curiosity’s island an entirely generic island; the trial judge cited particular visual elements of the setting that Robinson had conceived and that the Cinar appellants had copied.
The development of a group of characters that have specific personality traits and whose interactions hinge on those personalities can require an exercise of skill and judgment sufficient to satisfy the Copyright Act’s originality criterion: see for example Productions Avanti Ciné-Vidéo Inc. v. Favreau (1999), 177 D.L.R. (4th) 568 (Que. C.A.), leave to appeal refused,  1 S.C.R. xi. Sucroë reproduces more than generic elements which all are free to draw upon for inspiration. It reproduces Curiosity’s particular combination of characters with distinct personality traits, living together and interacting on a tropical island ― elements that represent a substantial part of the skill and judgment expressed in Curiosity.
In so holding, the Supreme Court implicitly accepted that copyright in a TV series can extend to the graphic appearance and personality traits of characters, interactions between characters, and the graphic appearance of settings.
Whose perspective is used in determining if a substantial part has been copied
A question that has bedeviled courts, particularly in the US where the concept of substantial similarity is central to a finding of infringement, is the question of whose perspective is to be used in making the comparison between the two works.
Ango-Canadian courts have not generally canvassed this question in detail. In Francis Day, a music case, Lord Wilberforce suggested the perspective should be an assessment of an ordinary reasonable experienced listener who might think that one work had come from another. Other authorities have suggested that the assessment is to be done by the person to whom the work is normally addressed. Many cases are silent on the test. However, a test that has often been applied is the perception of the judge assisted by evidence, almost invariably, by expert evidence, that is helpful to identify objective resemblances.[viii]
There is a great deal of case law on this issue in the U.S. where the courts use a variety of different tests including a “lay or ordinary observer” test, the “actual or intended audience” for the work test, and a more “discerning intended audience” for the work test. In general, and at a very high level, the “ordinary observer” test attempts to gauge the reaction of the ordinary man on the street to the two works. The intended audience test asks if the audience to whom the works are directed would consider them substantially similar based on their spontaneous and immediate impression. In the more discerning test the fact finder attempts to extract the unprotectable elements from consideration and considers whether the protectable elements as a whole are substantially similar.[ix]
Without referring to any Anglo-Canadian or US cases on the point, the Supreme Court expressed the opinion that the proper perspective is the “intended audience for the works at issue”. However, because similarities can be patent or latent or difficult to appreciate, it may sometimes be necessary to go beyond this to call upon an expert versed in the relevant art or technology to help the trial judge. According, to the Court:
In my view, the perspective of a 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”: Vaver, at p. 18
Admissibility of expert evidence
Expert evidence is regularly admitted in copyright cases. It is especially important in cases to avoid under protecting or over protecting works, where the expert evidence is outside of the knowledge of the judge who may not be to appreciate what is commonplace, a stock device, or what is original. In music cases, for example, expert evidence is invariably called to educate the court in the nuances of melody, rhythm, orchestration, and even lyrics and to identify and explain common or unusual musical features.[x]
Despite the importance of expert evidence in copyright cases, no appellant Canadian case had authoritatively canvassed the admissibility of such evidence. The appellants had challenged the use of the evidence of a semiologist, Dr. Charles Perraton. Dr. Perraton offered evidence that, quite apart from the surface meaning of the works at issue, there were latent similarities in how the two works used atmosphere, dynamics, motifs, symbols, and structure to convey meaning. The trial judge relied on this evidence in concluding that the Cinar appellants had copied a substantial part of Robinson’s work. The Court in the paragraph quoted above explained that expert evidence can be admitted to help the trial judge in areas outside of his/her expertise. The court went further and held the evidence of Dr Perraton was admissible in accordance with generally applicable principles related to admissibility of experts in intellectual property cases.
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 (R. v. Mohan,  2 S.C.R. 9). These criteria apply to trials for copyright infringement, as they do in other intellectual property cases: Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27,  2 S.C.R. 387, at para. 75.
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: see Preston v. 20th Century Fox Canada Ltd. (1990), 33 C.P.R. (3d) 242 (F.C.T.D.), aff’d (1993), 53 C.P.R. (3d) 407 (F.C.A.); Arbique v. Gabriele,  J.Q. no 3794 (QL) (Sup. Ct.), aff’d 2003 CanLII 16298 (Que. C.A.). They argue that trial judges are well placed to understand a lay person’s point of view and that the assistance of an expert is unnecessary to help them grasp this perspective….
In my view, the perspective of a 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”: Vaver, at p. 187.
To take an example, two pieces of classical music may, to the untrained ear, sound different, perhaps because they are played on different instruments, or at different tempos. An expert musician, however, might see similarities suggesting a substantial part has been copied ― the same key signature, the same arrangement of the notes in recurring passages, or a recurrent and unusual harmonic chord. It will be for the judge to determine whether the similarities establish copying of a substantial part, to be sure. But in making that determination, the judge may need to consider not only how the work sounds to the lay person in the intended audience, but also structural similarities that only an expert can detect.
In the present case, the necessity criterion of the test for the admissibility of expert evidence is satisfied. First, the works at issue are intended for an audience of young children. A rigid application of the “lay person in the intended audience” standard would unduly restrict the court’s ability to answer the central question, namely whether a substantial part of Robinson’s work was copied. It would shift the question to whether the copied features are apparent to a five-year-old.
Second, the nature of the works at issue makes them difficult to compare. The trial judge was faced with the task of comparing a sprawling unrealized submission for a television show to a finished product that had aired on television. These are not works that are easily amenable to a side-by-side visual comparison conducted by a judge without the assistance of an expert.
Finally, the works at issue had both patent and latent similarities. Or, as Dr. Perraton explained it, they shared “perceptible” and “intelligible” similarities. “Perceptible” similarities are those that can be directly observed, whereas “intelligible” similarities ― such as atmosphere, dynamics, motifs, and structure ― affect a viewer’s experience of the work indirectly. Expert evidence was necessary to assist the trial judge in distilling and comparing the “intelligible” aspects of the works at issue, which he would not otherwise appreciate. Consequently, the trial judge did not err in admitting the expert evidence of Dr. Perraton.
Vicarious liability of officers and directors
In many copyright cases, and in particular, in cases of copyright piracy, officer and directors, the directing minds of the corporate defendant are sued for infringement. The leading case is the Federal Court of Appeal decision in Mentmore Manufacturing Co. v. National Merchandising Manufacturing Co. (1978), 89 D.L.R. (3d) 195 (F.C.A.). The Court applied the reasoning in Mentmore stating the following:
For a director and/or officer to be held liable for his or her company’s infringement of a copyright, “there must be circumstances from which it is reasonable to conclude that the purpose of the director or officer was not the direction of the manufacturing and selling activity of the company in the ordinary course of his relationship to it but the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it”: Mentmore Manufacturing Co. v. National Merchandising Manufacturing Co. (1978), 89 D.L.R. (3d) 195 (F.C.A.), at pp. 204-5, per Le Dain J.
Accounting of profits
Pursuant to s. 35 of the Copyright Act, the trial judge awarded both compensatory damages to account for Robinson’s losses (including non-pecuniary damages) and 50 percent of the profits made by the infringers, against all the Cinar appellants, on a solidary (joint and several) basis. On the facts of the case, the appellants had used a soundtrack created by Robinson in Sucroë. Robinson had claimed the profits from Sucroë based on the use of the soundtrack. The appellants had argued that the profits had to be apportioned and limited only to the profits earned from the use of the sountrack. The Court refused to allow the apportionment based on the factual finding of the trial judge that the music revenues could not be disassociated from the overall work.
Section 35 of the Copyright Act provides that a defendant can be ordered to “disgorge its profit to the extent that such profit is caused by the infringement. The requirement for a [causal] link between infringement and profit may require that the profit be apportioned between that which is attributable to the infringement and that which is not”: McKeown, at p. 24-82.3 (emphasis added). The onus is on the infringer to “satisfactorily separate non-infringing from infringing activities”: Vaver, at p. 653; Sheldon v. Metro-Goldwyn Pictures Corporation, 106 F.2d 45 (2nd Cir. 1939), per Learned Hand J. In some cases, “an infringer may so interweave the right-holder’s work with its own as to make separation impossible”: Vaver, at p. 637.
The apportionment of profits between infringing and non-infringing components of a work is essentially a factual determination which is subject to judicial discretion: Wellcome Foundation Ltd. v. Apotex Inc.,  2 F.C. 618 (C.A.), at para. 23; Lubrizol Corp. v. Imperial Oil Ltd.,  2 F.C. 3 (C.A.), at para. 9. 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: Housen.
In the case at hand, the trial judge found that [translation] “the music revenues cannot be disassociated from the overall . . . work”: para. 1016. The Court of Appeal disagreed and asked itself what profits would have been generated if the soundtrack had been commercialized as a separate product, independently of the infringing material (para. 196). It relied on the “differential profit” approach used in patent infringement cases, in which a comparison is made “between the defendant’s profit attributable to the invention and his profit had he used the best non-infringing option”: Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34,  1 S.C.R. 902, at para. 102.
In my view, the Court of Appeal erred by interfering with the trial judge’s conclusion that the profits stemming from the soundtrack could not be dissociated from the profits derived from the infringing material. The “differential profit” approach on which the Court of Appeal relied is generally used in cases where an infringement allows the infringer to commercialize a good in a more profitable manner than he could have without the infringement. However, there is no evidence that the soundtrack could have been commercialized as a separate product if Curiosity had not been infringed in the first place. The soundtrack was only commercialized as a component of the television show Sucroë, which was itself created by copying a substantial part of Robinson’s work. The trial judge was entitled to conclude that the soundtrack had no stand-alone value, and that it generated profits only as an accessory to the television show. Consequently, he 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.
Joint and several liability for accounting of profits
Another issue in the case was whether the remedy of accounting of profits can be assessed on a joint and several basis. The Court explained the purposes of the accounting of profits remedy and held that it cannot be imposed on a joint and several basis, at least not under Quebec civil law.
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. Disgorgement of profits under s. 35 is designed mainly to prevent unjust enrichment, although it can also serve a secondary purpose of deterrence: Vaver, at p. 650. It is not intended to compensate the plaintiff. This remedy is not subject to the principles that govern general damages awarded under Quebec’s law of extra-contractual liability, whose aim is compensatory. Consequently, solidarity of profits ordered disgorged under s. 35 of the Copyright Act cannot be inferred from art. 1526 of the CCQ, which makes co-authors of a fault solidarily liable for the “obligation to make reparation for injury caused to another”.
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.
The trial judge awarded Robinson $400,000 in non-pecuniary damages as compensation for his psychological suffering. He analogized Robinson’s psychological suffering to the injury sustained by a victim of defamation. The Court agreed with the trial judge that damages for Robinson’s psychological suffering could be assessed under principles analogous to those used in assessing damages for defamation.
It is more appropriate to characterize Robinson’s psychological suffering as a non-pecuniary damage stemming from material injury. Indeed, the infringement of copyright was a breach of Robinson’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. As Professor Gardner states it, [translation] “the appropriation of Claude Robinson’s work is, for him, a material injury with pecuniary consequences (the profits generated by using it) and non-pecuniary consequences (the stress, emotional distress or, in other words, psychological injury that results from it)”: “Revue de la jurisprudence 2011 en droit des obligations” (2012), 114 R. du N. 63, at p. 70. As discussed, the scope of application of the Andrews cap is limited; it does not apply to non-pecuniary damages stemming from material injury…
In this case, the trial judge relied heavily on the personal approach, emphasizing the subjective impact of the infringement of copyright on Robinson’s mental state and personal life. He bolstered his analysis by comparing Robinson’s anguish to the similar level of anguish experienced by the plaintiff in the defamation case Société Radio-Canada v. Gilles E. Néron Communication Marketing inc.,  R.J.Q. 2639 (C.A.), aff’d 2004 SCC 53,  3 S.C.R. 95. In Néron, the Court of Appeal confirmed an award of non-pecuniary damages in the amount of $300,000. The trial judge also looked to the Hill case, in which this Court awarded $300,000 in general damages to a victim of defamation. He correctly took into account the fact that Hill had been decided over a decade before the case at hand, and that a valid comparison required the amount awarded to be adjusted for inflation.
I agree with the trial judge that Robinson’s non-pecuniary damages are analogous to those claimed by a victim of defamation. The product of Robinson’s artistic exertions was taken from him and the integrity of his personal creative process was violated, causing deep psychological suffering. These harms are similar to those suffered by a victim of defamation.
The trial awarded $1,000,000 in punitive damages on a joint and several basis against Cinar and a number of the other appellants. The Court of Appeal reduced the award to $250,000. The Court increased the award to $500,000. In doing so the Court reviewed the statutory basis for the award as well as the proper approach to awarding punitive damages for copyright infringement.
In Quebec, punitive damages can only be awarded where they are provided for by a specific enabling enactment. The Court found such a basis in the Quebec Charter of human rights and freedoms. In particular, the Court found that copyright infringement violated two of Robinson’s Charter rights. First, the infringement violated his rights under s6 of the Charter which provides that “[e]very person has a right to the peaceful enjoyment and free disposition of his property, except to the extent provided by law”. In addition, the infringement of copyright interfered with Robinson’s personal rights to inviolability and to dignity, recognized by ss. 1 and 4 of the Charter.
Section 49 of the Charter provides that punitive damages may be awarded if there is an unlawful and intentional interference with any of the rights and freedoms that the Charter recognizes. The evidence establishes unlawful and intentional interference with several of Robinson’s Charter rights. Copyright infringement is a violation of s. 6 of the Charter, which provides that “[e]very person has a right to the peaceful enjoyment and free disposition of his property, except to the extent provided by law”: see Construction Denis Desjardins inc. v. Jeanson, 2010 QCCA 1287 (CanLII), at para. 47. Additionally, the infringement of copyright in this case interfered with Robinson’s personal rights to inviolability and to dignity, recognized by ss. 1 and 4 of the Charter.
An interference with the right to inviolability “must affect the victim’s physical, psychological or emotional equilibrium in something more than a fleeting manner”: St-Ferdinand, at para. 97. The trial judge made detailed findings of fact to the effect that Robinson’s psychological and emotional equilibrium were deeply affected as a result of the infringement and the ensuing legal proceedings (paras. 981-82).
An interference with the right to dignity is a violation of “the respect to which every person is entitled simply because he or she is a human being and the respect that a person owes to himself or herself”: St-Ferdinand, at para. 105. In Markarian v. Marchés mondiaux CIBC inc., 2006 QCCS 3314 (CanLII), the Quebec Superior Court found that
[a] lack of respect, contempt and degrading treatment constitute interference with dignity. They must reach a certain degree to be sanctioned under the charter. [para. 589]
Here, Cinar, Weinberg, Charest, and Izard consistently and contemptuously denied having access to Robinson’s work, and disparaged Robinson’s claims that they had copied his work. Their behaviour constitutes an interference with Robinson’s Charter right to dignity, and provides an additional basis for the award of punitive damages.
The Court examined whether punitive damages could be assessed on a joint and several basis under Quebec law and determined that it was not permissible.
It then explained the basis for awarding Robinson $500,000 in punitive damages under Quebec law. Notably, the Court emphasized that the wilful infringement threatened one of the fundamental goals of Canadian copyright law, namely “to prevent someone other than the creator [of a work] from appropriating whatever benefits may be generated”.
As discussed, punitive damages are assessed by looking to the purposes they serve — prevention, deterrence, and denunciation. Factors to be considered include the gravity of the debtor’s fault; the debtor’s patrimonial situation; the extent of the reparation for which the debtor is already liable to the creditor; and the fact that the payment of damages will be wholly or partly assumed by a third person (art. 1621 CCQ). I also note that, in Quebec civil law, “it is perfectly acceptable to use punitive damages, as is done at common law, to relieve a wrongdoer of its profits where compensatory damages would amount to nothing more than an expense paid to earn greater profits while flouting the law”: Richard, at para. 206.
In addition, particular attention must be paid to the gravity of the debtor’s fault, which “is undoubtedly the most important factor”: Richard, at para. 200. The gravity is assessed from two perspectives: “. . . the wrongful conduct of the wrongdoer and the seriousness of the infringement of the victim’s rights” (ibid.).
This said, punitive damages must be awarded with restraint. Article 1621 of the CCQ expressly provides that the award of punitive damages “may not exceed what is sufficient to fulfil their preventive purpose”. The typical range for punitive damages in Quebec is between $5,000 and $250,000: see review of the case law in the reasons of the Court of Appeal, at para. 249. However, in cases where the gravity of the conduct warrants it, punitive damages reaching $1,000,000 or more have been awarded: Markarian; Whiten v. Pilot Insurance Co., 2002 SCC 18,  1 S.C.R. 595.
In this case, the relevant factors point in different directions. On the one hand, the gravity of the conduct suggests a high amount of punitive damages. Cinar, Weinberg, Charest, and Izard engaged in intentional and calculated copyright infringement, which they planned to keep secret all the while reaping profits from an internationally successful children’s television series. They persistently denied having copied any portion of Robinson’s work throughout the lengthy legal proceedings. Conduct of this nature threatens one of the fundamental goals of Canadian copyright law, namely “to prevent someone other than the creator [of a work] from appropriating whatever benefits may be generated”: Théberge, at para. 30. The impact of this conduct on Robinson 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. He experienced profound anguish. Insult was added to injury by the callous denials of copying and by insinuations to the effect that Robinson was simply an attention-seeking eccentric.
On the other hand, Cinar, Weinberg, Charest, and Izard have already been found liable towards Robinson for substantial amounts of money. As the Court of Appeal noted, they will be largely deprived of any benefits they may have gained from the infringement…
[i] CCH Canadian Ltd. v. Law Society of Upper Canada (2002), 18 C.P.R. (4th) 161 (Fed. C.A.), Newspaper Licensing Agency Ltd. (The) v. Marks & Spencer Plc,  3 All E.R. 977 (H.L.), IceTV Pty Ltd. v. Nine Network Australia Pty Ltd.,  HCA 14 (H.C. Aust.)
[ii] King Features Syndicate (Inc.) v. Kleemann (O. & M.) Ltd.,  2 All E.R. 403 (H.L.)
[iii] Hanfstaengl v. Baines & Co. Ltd.,  A.C. 20 (H.L.); See also Designers Guild Ltd. v. Russell Williams (Textiles) Ltd.,  1 All E.R. 700 (H.L.) per Lord Scott “The judge, in rejecting that argument, said, at p. 828: “In my judgment there has been copying of a substantial part.” He went on to emphasise that it was “the whole work” that had to be looked at “to determine whether the alleged infringing material [had] adopted the essential features and substance of the original”. He said:”The right approach is to look at the end result of the acetate, the striped artwork, the modifications made by Mrs. Williams (especially making the stripes less harsh) and her selection of colourways, and the printed fabric. That end result is an infringement of the painting on which Ixia was based.” In my opinion, the judge’s approach in comparing Ixia (“the whole work”) with Marguerite (“the end result”) was correct. And having made the comparison he expressed his conclusion that: “It is the design which was copied and has been reproduced” (emphasis added). So, what had been copied was the design, and the design was a substantial part. In dealing in this way with the “substantial part” argument that had been addressed to him by counsel, the judge was re-affirming his conclusion that the Ixia design had been copied.”
[iv] Delrina Corporations v. Triolet Systems Inc. (2002), 17 C.P.R. (4th) 289 (Ont. C.A.)
[v] See, Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2nd Cir. 1992).
[vi] Designers Guild
[vii] See, Hanfstaengl v. Baines, Designers Guild, Hutton v. Canadian Broadcasting Corp., 1992 ABCA 39, Grignon v. Roussel (1991), 38 C.P.R. (3d) 4
[viii] Garnett, Copinger and Skone James on Copyright, 16th ed., London: Sweet & Maxwell, 2011 at P.477, Designers Guild Ltd. v. Russell Williams (Textiles) Ltd.,  E.W.J. No. 1422 (Eng. C.A.), Francis Day, Grignon
[ix] See generally, Nimmer on Copyright at 13.03[A], [E], [E][a] IA72
[x] Copinger at p. 430