Cinar Corporation v Robinson: Substantial Protection for Substantial Infringement – Part I

There are many unsettled aspects of Canadian copyright law, ranging from Parliament’s intended scope of fair dealing principles to the proper evaluation of substantial infringement. The case of Cinar Corporation v Robinson, [2013] 3 SCR 1168 [Cinar Corp] constitutes the Supreme Court of Canada’s (“SCC”) most recent iteration on the latter. While the case reinforces a general desire by the Court’s to protect original works, the lessons to be drawn from it go beyond the purely legal realm.

Part I of this two part article describes the factual background and trial history of the case, also delving into the ruling of the Court with regard to substantial infringement. Part II concerns damages and the use of expert testimony, alongside the implications arising from the case as a whole.

Facts

Drawing inspiration from Daniel Defoe’s novel entitled “Robinson Crusoe” alongside his own life experiences, Claude Robinson created an educational children’s show entitled “The Adventures of Robinson Curiosity” (“Curiosity”). In developing the show, Robinson engaged in the extensive design of sketches, storyboards, scripts and promotional material. In order to pursue the dissemination of his work, Robinson undertook various initiatives from 1985 to 1987 to market his product, including providing a copy of his Curiosity project to directors and officers of Cinar Corporation (“Cinar”), the Appellants. These efforts were fruitless, as the project ultimately failed to attract actual investment.

In 1995, long after putting his Curiosity project on the backburner, Robinson became aware of a new children’s show entitled “Robinson Sucroe” (“Sucroe”). The show appeared to be a blatant copy of his original work. Upon learning that several parties who had been given access to his Curiosity project – including Cinar and its officers/directors – were involved in the creation of Sucroe, Robinson commenced an action for copyright infringement against Cinar and its various co-producers and distributors. Claiming numerous forms of damages, he argued that the various parties involved had breached their obligations of good faith and loyalty by entering into a contract to develop the show with the knowledge that doing so would cause him harm.

Trial History

At trial, the evaluation of extensive testimony and expert evidence led to a ruling that Robinson’s work qualified as original and protectable and that the creators of Sucroe had copied a substantial part of the work, resulting in a finding of copyright infringement. Moreover, the trial judge held that Cinar and two of its directors were extra-contractually liable for violating their obligations of good faith and loyalty. Costs exceeding five million dollars in compensatory damages, which included one million dollars in punitive damages, were awarded to Robinson.

At the Court of Appeal, the findings of the trial judge with respect to both infringement and damages were upheld in part, subject to certain mathematical recalculations which reduced the total. Among other things, the Court of Appeal reduced the punitive damages award from 1 million to 250 thousand dollars, holding that punitive damages in Quebec (the jurisdiction handling the claims) must be moderate.

On appeal to the SCC, three main issues were considered: 1) the proper test to be employed for identifying substantial infringement; 2) the proper use of expert testimony; and 3) the proper assessment of damages. Cinar submitted that the trial judge had erred in its consideration of all three issues.

SCC Analysis

Infringement

Justice McLachlan, writing for a unanimous court, began her analysis by describing the intended balance between creators and consumers established by the Copyright Act, RSC 1985, c C-42 [Copyright Act]. Rather than protect every constituent element of a work clothed in copyright, s. 3 of the Copyright Act stipulates that copyright owners retain the sole right to reproduce “the work or any substantial part thereof.” Generally speaking, the notion of a “substantial part” is flexible, essentially relating to “…a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein” (Cinar Corp, para 26).

The Appellants argued that the test for substantial reproduction involves a three step approach requiring the deconstruction of a work into its constituent parts in order to differentiate between original and non-protectable elements. Following this comparison, only the portions of a work which are deemed “protectable” can be considered when analyzing substantial reproduction. Often referred to as the “abstraction filtration comparison” test, this approach was established in the American case of Computer Associates International, Inc v Altai, Inc, 982 F2d 693 (2nd Cir 1992) [Altai], and discussed at length in the Canadian equivalent of Delrina Corp v Triolet Systems Inc (2002), 58 OR (3d) 339 (CA).

According to Justice McLachlan, “many types of works do not lend themselves to a reductive analysis” (para 35). In this case, the Court held that dissecting Robinson’s work into its component parts would prevent a qualitative and holistic analysis – an approach which Canadian courts have consistently adopted when engaging in a “substantial part” analysis. Rather than placing an undue focus on the individual pieces comprising a work, the cumulative effect of copied features must be considered “to determine whether those features amount to a substantial part of [the creator’s] skill and judgment expressed in [his or her] work as a whole” (para 36).

The Appellants further submitted that the trial judge focused too heavily on proposed similarities between the works, failing to properly weigh the differences in arriving at a finding of substantial infringement. However, Justice McLachlan clarified that questions regarding substantial copying must focus on whether copied features constitute a substantial part of a plaintiff’s work – not whether they amount to a substantial part of a defendant’s work (para 39).

Consequently, unless differences are so great that they render the defendant’s work “new and original”, notable differences cannot independently trigger the preclusion of claims regarding substantial copying. According to Justice McLachlan, by engaging in a qualitative and holistic analysis the trial judge necessarily took into account the relevant similarities and differences between the works in arriving at a ruling for Robinson. The Court therefore upheld the trial decision on the basis that Cinar had failed to “demonstrate palpable or overriding errors in the trial judge’s findings on substantiality” (para 47).

For a summary of the Court’s discussion regarding damages and the use of expert testimony, alongside an analysis of possible implications arising from the case, Part II of this article can be found here.