Cinar Corporation v. Les Films Cinar inc., 2013 SCC 73

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 adual 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 underQuebec’s law of extra-contractual liability, whose aim is compensatory. Disgorgement under s. 35 of the Copyright Act goes no furtherthan is necessary to prevent each individual defendant from retaining a wrongful gain.

Defendants cannot be held liable for the gains ofco-defendants by imposing liability for disgorgement on a solidary basis. For the same reasons, W, C, and I are not personally liable todisgorge 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 thepresent 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 theCivil Code of Québec. It is more appropriate to characterize R’s psychological suffering as a non-pecuniary damage stemming frommaterial injury. Indeed, the infringement of copyright was a breach of R’s property rights. It is the initial breach, rather than theconsequences flowing from that breach, which serves to characterize the type of injury suffered. The Court of Appeal accordingly erredin 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 areanalogous to those claimed by a victim of defamation. The trial judge had the advantage of observing R in court over a long period oftime and was well placed to conduct a personalized evaluation of his non-pecuniary damages. He made no palpable and overriding errorin 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 punitivedamages regime under the Charter is autonomous from the extra-contractual civil liability regime established under the Civil Code ofQuébec.

Article 1526 of the Civil Code of Québec applies to extra-contractual fault causing injury and cannot ground the solidarity ofpunitive damages awarded under the Charter. Furthermore, awarding punitive damages on a solidary basis would be inconsistent withthe 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 thejustice system — be taken into account when awarding them.

Both the objectives of punitive damages and the factors relevant toassessing 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 sufficientweight to the gravity of the conduct in this case.

Indeed, Cinar, W, C, and I consistently and contemptuously denied having access toR’s work, and disparaged R’s claims that they had copied his work. The impact of this conduct on R was equally serious. It deprivedhim 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 awardof punitive damages “may not exceed what is sufficient to fulfil their preventive purpose”. An amount of $500,000 reaches anappropriate balance between the overarching principle of restraint that governs these damages, on the one hand, and the need to deterconduct of this gravity, on the other. The Court of Appeal held Cinar liable for two-fifths of the amount of punitive damages, and eachof 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., (SCC), [1978] 2 S.C.R. 229; Thornton v. SchoolDistrict No. 57 (Prince George), (SCC), [1978] 2 S.C.R. 267; Arnold v. Teno, (SCC), [1978] 2 S.C.R.287; referred to: Massie & Renwick Ltd. v. Underwriters’ Survey Bureau Ltd., (SCC), [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 ofCanada v. Bell Canada, 2012 SCC 36, [2012] 2 S.C.R. 326; Entertainment Software Association v.

Society of Composers, Authors andMusic Publishers of Canada, 2012 SCC 34, [2012] 2 S.C.R. 231; Rogers Communications Inc. v. Society of Composers, Authors andMusic 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. RussellWilliams (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; DelrinaCorp. v. Triolet Systems Inc. (2002), (ON CA), 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), (QC CA), 177 D.L.R. (4th) 568,leave to appeal refused, [2000] 1 S.C.R. xi; R. v. Mohan, (SCC), [1994] 2 S.C.R. 9; Masterpiece Inc. v. AlavidaLifestyles 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 ; Mentmore Manufacturing Co. v. NationalMerchandising Manufacturing Co. (1978), (FCA), 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., (FCA), [2001] 2 F.C. 618; Lubrizol Corp. v. Imperial Oil Ltd., (FCA), [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, (SCC), [1996] 3 S.C.R. 211; Lindal v. Lindal, (SCC), [1981] 2 S.C.R. 629; Hill v.

Church ofScientology of Toronto, (SCC), [1995] 2 S.C.R. 1130; Snyder v. Montreal Gazette Ltd., (SCC), [1988] 1S.C.R. 494; Schreiber v. Canada (Attorney General), 2002 SCC 62, [2002] 3 S.C.R. 269; Landry v. Audet, 2011 QCCA 535 ,leave to appeal refused, [2011] 3 S.C.R. v; Gauthier v. Beaumont, (SCC), [1998] 2 S.C.R. 3; Stations de la Vallée deSaint-Sauveur inc. v. M.A., 2010 QCCA 1509, [2010] R.J.Q. 1872; Société Radio-Canada v. Gilles E. Néron Communication Marketinginc., (QC CA), [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 ; Markarian v.

Marchés mondiaux CIBC inc., 2006 QCCS 3314 ; Genex Communicationsinc. 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] 3S.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 , 7 e éd., vol. I, Principes généraux . Cowansville, Qué.: Yvon Blais, 2007. Baudouin, Jean-Louis, et Pierre-Gabriel Jobin. Les obligations , 7 e 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 , 3 e 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 , 3 e éd., vol. 2. Montréal: Wilson & Lafleur, 2009. Lluelles, Didier, et Benoît Moore. Droit des obligations , 2 e 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. n o 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 certificateidentifying Robinson as the author of Curiosity and Les Productions Nilem inc. (“Nilem”) ― a corporation of which Robinson is the soledirector 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.

Ofparticular relevance to this appeal, in 1986 Cinar Corporation (“Cinar”) was retained by one of Robinson’s production partners, PathonicInternational Inc. (“Pathonic”), as a consultant to promote the project in the United States and to offer general production advice. RonaldWeinberg and his late wife Micheline Charest, who were directors and officers of Cinar, became involved in the project. Robinson gaveWeinberg and Charest a copy of his Curiosity work.

Ultimately, nothing came of Cinar’s efforts to find financial partners for the projectin the United States. [5] In 1987, Robinson partnered with Les Productions SDA ltée (“SDA”) to produce the television show. Nilem andSDA set up two corporations, Curious Island Productions Inc. and Curious Island Enterprises Inc., which they intended to use as vehiclesfor the production. [6] During that same year, Robinson and SDA participated in a television industry convention held at Cannes, inFrance.

At this convention, they allegedly gave a presentation on Curiosity to Christophe Izard, a French creator of children’s televisionshows. [7] Despite the various efforts undertaken by Robinson and his partners, the project failed to attract investors andstalled. 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 hisCuriosity 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 wasstunned 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 liveson an island and interacts with other characters.

There are however notable differences between the works. Many of the “side-kicks” inCuriosity are animals, whereas in Sucroë they are predominantly humans. Also, Sucroë, unlike Curiosity, features a band of maraudingpirates 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 independentcreation, but rather had been developed by copying Curiosity.

He and Nilem commenced an action for copyright infringement againstCinar, Weinberg, Charest, Izard, and various co-producers and distributors of Sucroë. They also claimed damages under the rules ofextra-contractual liability, contending that Cinar, Weinberg, and Charest had breached their obligations of good faith and loyalty underthe 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 thetestimony of over 40 witnesses and 4 experts, as well as extensive documentary and audio-visual evidence, the trial judge concluded thatRobinson’s Curiosity was an original work protected by copyright, that the creators of Sucroë had copied Curiosity, and that the featuresreproduced 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 relevanttime, personally liable for the infringement.

Finally, the trial judge found that Cinar, Weinberg, and Charest were extra-contractuallyliable 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 commonlaw) and costs in the amount of $5,224,293: $607,489 in compensatory damages for Robinson’s pecuniary losses stemming from theinfringement; $1,716,804 to disgorge the profits earned as a result of the infringement; $400,000 for the psychological harm suffered byRobinson; $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 ofpersonal liability for copyright infringement, except for Davin, against whom the evidence was insufficient in its view: 2011 QCCA1361, 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, andIzard 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 trialjudge 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., (SCC), [1978] 2 S.C.R. 229, Thornton v. School District No. 57 (Prince George), (SCC), [1978] 2 S.C.R.267, and Arnold v.

Teno, (SCC), [1978] 2 S.C.R. 287) was applicable to the award for psychological suffering andreduced 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 thatpunitive 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 ofQuébec, 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 toaward 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 anddisgorgement 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 copyrightinfringement because Robinson assigned all of his rights in Curiosity to Nilem, and Nilem thereafter assigned those rights to CuriousIsland 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., (SCC), [1940] S.C.R. 218, at pp. 233-34. In my view, he has failed to discharge this burden.

On the record before thisCourt, 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 1987shareholders’ agreement by which Nilem transferred its rights to Curious Island Enterprises contained a resolutory clause pursuant towhich the rights would revert back to Nilem if Curious Island Enterprises was dissolved, and Curious Island Enterprises was indeeddissolved 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 disseminationof works of the arts and intellect and obtaining a just reward for the creator”: Théberge v. Galerie d’Art du Petit Champlain inc., 2002SCC 34, [2002] 2 S.C.R. 336, at para. 30; see also Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2012SCC 36, [2012] 2 S.C.R. 326, at paras. 8-11; Entertainment Software Association v.

Society of Composers, Authors and Music Publishersof Canada, 2012 SCC 34, [2012] 2 S.C.R. 231, at paras. 7-8; Rogers Communications Inc. v. Society of Composers, Authors and MusicPublishers of Canada, 2012 SCC 35, [2012] 2 S.C.R. 283, at para. 40. It seeks to ensure that an author will reap the benefits of hisefforts, in order to incentivize the creation of new works. However, it does not give the author a monopoly over ideas or elements fromthe public domain, which all are free to draw upon for their own works.

For example, “[t]he general stock of incidents in fiction or dramais 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. [24] The Act protects original literary, dramatic, musical, and artistic works: s. 5. It protects the expression of ideas inthese works, rather than ideas in and of themselves: CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 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. Infringementconsists of the unauthorized taking of that originality. [25] However, the Act does not protect every “particle” of an original work, “any little piece the taking of which cannotaffect the value of [the] work as a whole”: Vaver, at p.

Section 3 of the Copyright Act provides that the copyright owner has the soleright to reproduce “the work or any substantial part thereof”. [26] A substantial part of a work is a flexible notion. It is a matter of fact and degree. “Whether a

part is substantial mustbe decided by its quality rather than its quantity”: Ladbroke (Football), Ltd. v. William Hill (Football), Ltd., [1964] 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 thatwarrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents asubstantial portion of the author’s skill and judgment expressed therein. [27] A substantial part of a work is not limited to the words on the page or the brushstrokes on the canvas.

The Actprotects 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 forminga 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 bya work which does not reproduce a single sentence of the original. (Designers Guild Ltd. v.

Russell Williams (Textiles) Ltd., [2001] 1 All E.R. 700, at p. 706, per Lord Hoffmann; see also Nichols v.Universal Pictures Corporation, 45 F.2d 119 (2d Cir. 1930), per Learned Hand J.) [28] The need to strike an appropriate balance between giving protection to the skill and judgment exercised by authors inthe expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on theother, forms the background against which the arguments of the parties must be considered.

(2) The Issue on Appeal [29] The Cinar appellants no longer contest the trial judge’s findings that Robinson’s work as a whole was original, thatseveral of the appellants had access to the work, and that Sucroë and Curiosity share common features. Rather, they argue that the trialjudge made several errors in his assessment of whether a substantial part of Curiosity is reproduced in Sucroë, giving rise to a remedy forcopyright infringement.

(3) The Standard of Review [30] The conclusion of the trial judge that a substantial part of a plaintiff’s work was copied is entitled to appellatedeference. The issue of substantiality is one of mixed fact and law.

Consequently, an appellate court should generally defer to the trialjudge’s findings on substantiality, unless those findings are based on an error of law or palpable and overriding errors of fact: Housen v.Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235; Designers Guild, at p. 707, per Lord Hoffman, and p. 708, per Lord Millett; Baigent v.The Random House Group Ltd., [2007] EWCA Civ 247, [2007] F.S.R. 24, at paras. 125-26; Delrina Corp. v. Triolet Systems Inc. (2002), (ON CA), 58 O.R. (3d) 339 (C.A.), at para. 81; Vaver, at p. 182.

(4) Did the Trial Judge Err in Finding That a Substantial Part of Robinson’s Work Was Reproduced in Sucroë? [31] The trial judge, upheld by the Court of Appeal, found that the Cinar appellants infringed Robinson’s copyright bycopying a substantial part of his original work without his or Nilem’s authorization: see ss. 3(1) and 27(1) of the Copyright Act. [32] The Cinar appellants contend that the trial judge (

a) failed to follow the correct approach to assessing substantiality;(

b) failed to give sufficient weight to the significant differences between Sucroë and Curiosity; (

c) made an error in finding that thefeatures of Curiosity reproduced in Sucroë were protected by the Copyright Act; and (

d) based his findings on inadmissible expertevidence. I will address each of these arguments in turn. (

a) Did the Trial Judge Fail to Follow the Correct Approach to Assessing Whether a “Substantial Part” of a Work Was Reproduced? [33] The trial judge found that the Cinar appellants copied a number of features from Robinson’s Curiosity, including thevisual appearance of the main protagonist, the personality traits of the main protagonist and of other characters, visual aspects of thesetting, and recurring scenographic elements.

He concluded that, considered as a whole, the copied features constituted a substantial partof Robinson’s work. [34] 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 elementscommonplace in children’s television shows); and (3) compare what remains of Curiosity after this “weeding-out” process to Sucroë, anddetermine whether a substantial part of Curiosity was reproduced. [35] The approach proposed by the Cinar appellants is similar to the “abstraction-filtration-comparison” approach used toassess substantiality in the context of computer software infringement in the United States: see Computer Associates International, Inc. v.Altai, Inc., 982 F.2d 693 (2d Cir. 1992); B.

Clermont, “Les compilations et la

Loi sur le droit d’auteur: leur protection et leur création”(2006), 18 C.P.I. 219, at p. 237; B. Tarantino, “‘I’ve Got This Great Idea for a Show. . .’ ― Copyright Protection for Television Showand 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). [ 36 ] 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. [ 37 ] I thus conclude that the trial judge did not err by failing to follow the three-step approach advocated by the Cinar appellants. (

b) Did the Trial Judge Fail to Give Sufficient Weight to the Differences Between Sucroë and Curiosity? [ 38 ] The Cinar appellants contend that the trial judge focused almost exclusively on the similarities between Sucroë and Curiosity , and failed to consider the differences between the works.

They point to significant differences between the works: the secondary characters in Sucroë are humans, whereas in Curiosity several of those characters are animals; Sucroë prominently features as its “villains” a band of marauding pirates, whereas Curiosity does not seem to have any villains; and the protagonist in Sucroë is not particularly curious, whereas curiosity is the dominant personality trait of the protagonist in Curiosity . [ 39 ] 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 . [ 40 ] 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). [ 41 ] 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. (

c) Did the Trial Judge Err in Finding That the Features of Curiosity Reproduced in Sucroë Are Protected by the Copyright Act ? [ 42 ] The Cinar appellants contend that, by failing to follow their three-step approach and to give sufficient weight to differences between the works, the trial judge characterized as a substantial part of the work a series of features that are not protected by copyright law.

They argue that, at most, Sucroë reproduced the ideas embodied in Curiosity , elements drawn from the public domain (such as the protagonist of Daniel Defoe’s nearly 300-year-old novel), and other elements that are not original within the meaning of the Copyright Act . [ 43 ] 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. [ 44 ] 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. [ 45 ] 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.

[46] The development of a group of characters that have specific personality traits and whose interactions hinge on thosepersonalities can require an exercise of skill and judgment sufficient to satisfy the Copyright Act’s originality criterion: see for exampleProductions Avanti Ciné-Vidéo Inc. v. Favreau (1999), (QC CA), 177 D.L.R. (4th) 568 (Que. C.A.), leave to appealrefused, [2000] 1 S.C.R. xi. Sucroë reproduces more than generic elements which all are free to draw upon for inspiration.

It reproducesCuriosity’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. [47] In essence, the aspects of the trial judge’s reasons that the Cinar appellants take issue with are findings of mixed factand law. They invite this Court to embark on a fresh assessment of the features copied from Curiosity. I would decline to do so. Theyhave failed to demonstrate palpable or overriding errors in the trial judge’s findings on substantiality. (

d) Did the Trial Judge Err by Relying on Inadmissible Expert Evidence? [48] The Cinar appellants argue that the trial judge based the bulk of his findings regarding substantial copying oninadmissible expert evidence ― the evidence of a semiologist, Dr. Charles Perraton. Semiology is the study of signs and symbols andhow they convey meaning. Dr. Perraton offered evidence that, quite apart from the surface meaning of the works at issue, there werelatent similarities in how the two works used atmosphere, dynamics, motifs, symbols, and structure to convey meaning.

The trial judgerelied on this evidence in concluding that the Cinar appellants had copied a substantial part of Robinson’s work. [49] For expert evidence to be admitted at trial, it must (

a) be relevant; (

b) be necessary to assist the trier of fact; (

c) notoffend any exclusionary rule; and (

d) involve a properly qualified expert: R. v. Mohan, (SCC), [1994] 2 S.C.R. 9. Thesecriteria apply to trials for copyright infringement, as they do in other intellectual property cases: Masterpiece Inc. v. Alavida LifestylesInc., 2011 SCC 27, [2011] 2 S.C.R. 387, at para. 75. [50] 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 copiedmust 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, [1998] J.Q. no 3794(QL) (Sup. Ct.), aff’d (Que. C.A.).

They argue that trial judges are well placed to understand a lay person’s point ofview and that the assistance of an expert is unnecessary to help them grasp this perspective. [51] In my view, the perspective of a lay person in the intended audience for the works at issue is a useful one. It has themerit of keeping the analysis of similarities concrete and grounded in the works themselves, rather than in esoteric theories about theworks. However, the question always remains whether a substantial part of the plaintiff’s work was copied.

This question should beanswered from the perspective of a person whose senses and knowledge allow him or her to fully assess and appreciate all relevantaspects ― patent and latent ― of the works at issue.

In some cases, it may be necessary to go beyond the perspective of a lay person inthe intended audience for the work, and to call upon an expert to place the trial judge in the shoes of “someone reasonably versed in therelevant art or technology”: Vaver, at p. 187. [52] To take an example, two pieces of classical music may, to the untrained ear, sound different, perhaps because theyare played on different instruments, or at different tempos.

An expert musician, however, might see similarities suggesting a substantialpart has been copied ― the same key signature, the same arrangement of the notes in recurring passages, or a recurrent and unusualharmonic chord. It will be for the judge to determine whether the similarities establish copying of a substantial part, to be sure.

But inmaking that determination, the judge may need to consider not only how the work sounds to the lay person in the intended audience, butalso structural similarities that only an expert can detect. [53] In the present case, the necessity criterion of the test for the admissibility of expert evidence is satisfied. First, theworks at issue are intended for an audience of young children. A rigid application of the “lay person in the intended audience” standardwould unduly restrict the court’s ability to answer the central question, namely whether a substantial part of Robinson’s work wascopied.

It would shift the question to whether the copied features are apparent to a five-year-old. [54] Second, the nature of the works at issue makes them difficult to compare. The trial judge was faced with the task ofcomparing a sprawling unrealized submission for a television show to a finished product that had aired on television. These are notworks that are easily amenable to a side-by-side visual comparison conducted by a judge without the assistance of an expert. [55] 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. Expertevidence was necessary to assist the trial judge in distilling and comparing the “intelligible” aspects of the works at issue, which hewould not otherwise appreciate. Consequently, the trial judge did not err in admitting the expert evidence of Dr. Perraton.

(5) Conclusion [56] The Cinar appellants have failed to establish that the trial judge erred in concluding that they copied a substantialpart of Robinson’s work. C. The Personal Liability of Weinberg, Charest, and Davin for Infringement [57] France Animation, Cinar, Ravensburger, and RTV Family Entertainment no longer argue that they cannot be foundliable in their capacity as producers of Sucroë. Nor does Izard argue that he cannot be found liable in his personal capacity. However,Weinberg, Charest, and Davin contend that they cannot be found personally liable for copyright infringement.

(1) Weinberg and Charest

[58] The trial judge found that Weinberg and Charest were personally liable for the infringement of Robinson’scopyright, since they deliberately and knowingly engaged in the infringement. [59] Weinberg argues that Robinson failed to establish on a balance of probabilities that he and Charest knowinglyengaged in copyright infringement, contending that they had little direct involvement in the creative process of Sucroë. [60] For a director and/or officer to be held liable for his or her company’s infringement of a copyright, “there must becircumstances from which it is reasonable to conclude that the purpose of the director or officer was not the direction of themanufacturing and selling activity of the company in the ordinary course of his relationship to it but the deliberate, wilful and knowingpursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it”: MentmoreManufacturing Co. v.

National Merchandising Manufacturing Co. (1978), (FCA), 89 D.L.R. (3d) 195 (F.C.A.), at pp.204-5, per Le Dain J. [61] The trial judge concluded from the whole of the evidence that Weinberg and Charest deliberately, wilfully, andknowingly infringed Robinson’s copyright. This conclusion was supported by the evidence. The trial judge accepted testimony to theeffect that Weinberg and Charest personally had access to and actively consulted Robinson’s drawings during the development of Sucroë(paras. 786-99).

He drew adverse inferences from Weinberg and Charest’s persistent denials that they had access to Robinson’s work,despite the fact that they were given copies of the work and even made comments on it in the course of their consultations with Pathonic(paras. 254-58). The findings of personal liability are supported by the evidence and should not be set aside.

(2) Davin [62] The trial judge found Davin, the chief executive officer of France Animation at the relevant time, personally liablefor copyright infringement. He relied on evidence that Davin was involved in schemes orchestrated by Cinar in order to fraudulentlyobtain royalties and government subsidies, and noted that Davin was the hierarchical superior of Izard, who was personally involved inthe copying of Robinson’s work. The Court of Appeal overturned this finding of personal liability on the ground that it was not supportedby the evidence.

I agree with the Court of Appeal’s conclusion. [63] The trial judge established Davin’s liability by presumption, i.e. by the inductive process of inferring an unknownfact (Davin’s personal participation in copyright infringement) from known facts (Davin’s hierarchical position within France Animationand his participation in other fraudulent schemes): art. 2846 CCQ. Courts may only rely on presumptions that are “serious, precise andconcordant”: art. 2849 CCQ; see also Longpré v.

Thériault, [1979] C.A. 258, at p. 262. [64] The evidence relied upon by the trial judge did not support a serious, precise and concordant presumption that Davinwas personally, deliberately and knowingly involved in the copying of Robinson’s work, as required by Mentmore. The trial judgeinferred Davin’s knowing and deliberate participation from general circumstantial evidence. He observed that Davin was a [translation]“Teflon man” who had participated in fraudulent schemes (para. 835). However, these schemes were unrelated to the copying ofRobinson’s work.

Evidence of a dishonest and arrogant personality does not suffice to ground an inference of participation in copyrightinfringement. He also relied on Davin’s position as Izard’s hierarchical superior. Yet, this alone does not establish personal participationin copyright infringement.

An officer of a corporation cannot be held personally liable for copyright infringement merely on the basis ofhis hierarchical status as officer. [65] Robinson also argues that Davin “authorized” the copying of Robinson’s work, within the meaning of s. 3 of theCopyright Act. “Under s. 27(1) of the Copyright Act, it is an infringement of copyright for anyone to do anything that the Act only allowsowners to do, including authorizing the exercise of his or her own rights”: CCH, at para. 37. As stated in CCH: “Authorize” means to “sanction, approve and countenance” . . . .

Countenance in the context of authorizing copyright infringement mustbe understood in its strongest dictionary meaning, namely “[g]ive approval to; sanction, permit; favour, encourage” . . . .

Authorization isa question of fact that depends on the circumstances of each particular case and can be inferred from acts that are less than direct andpositive, including a sufficient degree of indifference . . . . [References omitted; para. 38.] [66] There is no evidence that Davin actively or passively authorized the copying of Robinson’s work in this sense.Indeed, the record fails to establish that Davin even knew or should have known that Sucroë was developed by copying Robinson’swork. [67] Finally, Robinson argues that Davin is liable as a producer of Sucroë.

His name appears as [translation] “executiveproducer” in the show’s credits in Canada, and as “producteur délégué” in France. This alone is insufficient to hold Davin personallyliable. As executive producer, he was acting as an officer of France Animation. It is France Animation, as a corporate entity distinct fromits directors and officers, that reproduced a substantial part of Robinson’s work by commissioning and commercializing Sucroë.

As theCourt of Appeal correctly noted, various contracts establish that it is France Animation and its co-producers, Cinar and Ravensburger,who hired the production staff and assumed financial as well as artistic responsibility for the production of Sucroë (para. 141). [68] I accordingly agree with the Court of Appeal that Davin cannot be held personally liable for copyright infringementon any of the grounds argued by Robinson. D.

The Extra-contractual Liability of Cinar, Weinberg, and Charest [69] Having concluded that Cinar, Weinberg, and Charest are liable for copyright infringement, it is unnecessary toexamine whether they can be found liable under Quebec’s regime of extra-contractual liability. This form of liability was only argued inthe alternative by Robinson and Nilem. E. Disgorgement of Profits [70] 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, discussed below) and 50 percent of the profits made by the infringers, against allthe Cinar appellants, on a solidary basis. [71] The Court of Appeal took issue with the trial judge’s award of profits and made several corrections. First, it excluded$1,117,816 in profits derived from Sucroë’s soundtrack, on the ground that there was no causal link between the infringement and thesoundtrack.

Second, it found that the trial judge erred in characterizing a payment of $684,000 from Ravensburger to France Animation(the “Ravensburger amount”) as revenue, and excluded the amount from the calculation of profits. Third, it found that a payment of$1,111,201 made by Cinar to a partnership called Jaffa Road (the “Jaffa Road amount”) should have been characterized as an expenseand deducted from the calculation of profits. Fourth, it held that only the corporate defendants should have been ordered to disgorgeprofits, and that under s. 35 of the Copyright Act profits can only be ordered disgorged on a joint basis.

Finally, it modified the date fromwhich to calculate interest and the additional indemnity on the award of profits. [72] Having concluded that under s. 35 of the Copyright Act profits cannot be disgorged on a solidary basis, the Court ofAppeal apportioned the total amount of profits between France Animation (60 percent), Ravensburger (15 percent), and Cinar (25percent). [73] Robinson and Nilem now seek to have the trial judge’s entire award of profits reinstated.

No appeal is broughtagainst the award of compensatory damages ordered by the trial judge under s. 35 of the Copyright Act for Robinson’s pecuniary losses. [74] The trial judge refused to order an accounting of profits, a decision which has not been appealed. Instead, hecalculated the net profits made from Sucroë on the basis of documentary evidence produced by the parties.

As a result, this Court doesnot have the benefit of the type of detailed record that typically results from a taking of accounts, and must confine itself to the trialjudge’s findings of fact and the documentary evidence on the record before it. [75] I will deal in turn with each of the alleged defects in the trial judge’s award of profits.

(1) Profits From the Sucroë Soundtrack [76] The soundtrack to Sucroë is the result of an independent creative process. It was not copied from Robinson’s work,but rather was incorporated into the materials that were copied. Robinson argues that there is nevertheless a causal link between theinfringement and the profits derived from the soundtrack. In his view, the soundtrack is an inextricable component of a television showthat was created through a process of copyright infringement. The Cinar appellants, for their part, argue that since the soundtrack resultsfrom independent creation, there can be no causal link between the infringement and the profits related to musical rights. [77]

Section 35 of the Copyright Act provides that a defendant can be ordered to “disgorge its profit to the extent thatsuch profit is caused by the infringement. The requirement for a [causal] link between infringement and profit may require that the profitbe 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 (2d Cir. 1939), per Learned Hand J.

In some cases, “an infringer may so interweave theright-holder’s work with its own as to make separation impossible”: Vaver, at p. 637. [78] The apportionment of profits between infringing and non-infringing components of a work is essentially a factualdetermination which is subject to judicial discretion: Wellcome Foundation Ltd. v. Apotex Inc., (FCA), [2001] 2 F.C.618 (C.A.), at para. 23; Lubrizol Corp. v. Imperial Oil Ltd., (FCA), [1997] 2 F.C. 3 (C.A.), at para. 9.

An appellatecourt may only disturb the trial judge’s findings on apportionment if there are errors of law or palpable and overriding errors of fact(Housen). [79] In the case at hand, the trial judge found that [translation] “the music revenues cannot be disassociated from theoverall . . . work” (para. 1016). The Court of Appeal disagreed and asked itself what profits would have been generated if the soundtrackhad 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 inventionand his profit had he used the best non-infringing option”: Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34, [2004] 1 S.C.R. 902, atpara. 102. [80] In my view, the Court of Appeal erred by interfering with the trial judge’s conclusion that the profits stemming fromthe soundtrack could not be dissociated from the profits derived from the infringing material.

The “differential profit” approach on whichthe Court of Appeal relied is generally used in cases where an infringement allows the infringer to commercialize a good in a moreprofitable manner than he could have without the infringement. However, there is no evidence that the soundtrack could have beencommercialized as a separate product if Curiosity had not been infringed in the first place. The soundtrack was only commercialized as acomponent of the television show Sucroë, which was itself created by copying a substantial part of Robinson’s work.

The trial judge wasentitled to conclude that the soundtrack had no stand-alone value, and that it generated profits only as an accessory to the televisionshow. Consequently, he did not make a reviewable error in concluding that it was inappropriate to apportion profits to the soundtrack as anon-infringing component of the work.

(2) The Ravensburger Amount [81] The Ravensburger amount represents $684,000 that Ravensburger paid to France Animation. The trial judgecharacterized this as a form of revenue stemming from Sucroë. I agree with the Court of Appeal that this characterization constitutes apalpable and overriding error. [82] The trial judge calculated the net profits stemming from Sucroë on a global basis, taking into account the revenueand expenses of all the co-producers.

However, he treated the Ravensburger amount in isolation, looking only to the fact that itconstituted a form of revenue for one of the co-producers, France Animation. This treatment of the Ravensburger amount wasinconsistent with the global approach adopted elsewhere. The amount also represented an outlay of capital for another co-producer,

Ravensburger. It was a contribution by Ravensburger to the financing of Sucroë, and its net effect was simply to partially shift the burdenof the production expenses from France Animation to Ravensburger. The amount did not constitute a form of revenue for the group ofco-producers taken as a whole. The Court of Appeal was correct to remove this amount from the revenues taken into account whencalculating the profits generated by Sucroë.

(3) The Jaffa Road Amount [83] Pursuant to a distribution agreement, Cinar sold an interest in Sucroë to Jaffa Road for $1,853,333. It is not contestedthat this amount was collected by Cinar and constitutes revenue stemming from Sucroë. In a later agreement, Jaffa Road transferred backto Cinar the distribution rights for Canada and the United States. That agreement provided that a minimum payment of $1,111,201 aspart of a “revenue guarantee” would be due unconditionally by Cinar about a year after the execution of the agreement.

The trial judgedid not characterize this amount as an expense incurred by Cinar, whereas the Court of Appeal did. [84] The substance of the trial judge’s finding was that the Cinar appellants had not proven the actual occurrence of atransfer of $1,111,201 from Cinar to Jaffa Road (para. 1022). The document submitted to establish this payment provided only for a“revenue guarantee” to be paid a year from the moment of execution. No evidence was tendered to demonstrate that this guarantee wasexecuted when it actually became due.

The trial judge was entitled to conclude that this document did not constitute proof of payment ofthe amount. Contrary to the suggestion of the Court of Appeal, he had no obligation to take this evidence at face value. Consequently, Iwould not deduct this amount as an expense when calculating the profits from Sucroë.

(4) Ordering Disgorgement Against All Infringers on a Solidary Basis [85] The trial judge ordered disgorgement against all the parties that he found liable for infringement on a solidary basis.The Court of Appeal held that this misconstrued the disgorgement remedy under s. 35 of the Copyright Act. It held that a defendant canonly be made to disgorge profits that it made, as opposed to the profits of other defendants with whom it participated in an infringement. [86] I agree with the Court of Appeal.

Section 35 of the Copyright Act provides a dual remedy for copyrightinfringement: damages for the plaintiff’s losses and disgorgement of the profits retained by the defendant. Disgorgement of profits unders. 35 is designed mainly to prevent unjust enrichment, although it can also serve a secondary purpose of deterrence: Vaver, at p. 650. It isnot intended to compensate the plaintiff. This remedy is not subject to the principles that govern general damages awarded underQuebec’s law of extra-contractual liability, whose aim is compensatory.

Consequently, solidarity of profits ordered disgorged under s. 35of the Copyright Act cannot be inferred from art. 1526 of the CCQ, which makes co-authors of a fault solidarily liable for the “obligationto make reparation for injury caused to another”. [87] Disgorgement under s. 35 of the Copyright Act goes no further than is necessary to prevent each individualdefendant from retaining a wrongful gain.

Defendants cannot be held liable for the gains of co-defendants by imposing liability fordisgorgement on a solidary basis. [88] For the same reasons, Weinberg, Charest, and Izard are not personally liable to disgorge profits. The profits fromSucroë were retained by the corporate entities that acted as co-producers. Weinberg, Charest, and Izard should not be required to disgorgeprofits that they did not retain in their personal capacity. [89] Having concluded that disgorgement must be ordered on a joint basis, I would maintain the Court of Appeal’sapportionment.

France Animation must disgorge 60 percent of the profits; Ravensburger, 15 percent; and Cinar, 25 percent.

(5) Interest and Additional Indemnity [90] The trial judge applied interest and the additional indemnity (arts. 1618 and 1619 CCQ) to the award of profits fromthe date of the letter of demand, i.e. December 5, 1995. [91] The Court of Appeal held that this amounted to imposing interest on the profits before they were earned. The profitsordered disgorged were earned during a period of over a decade, largely after December 5, 1995. Since the trial judge refused to order anaccounting, it is impossible to apply the interest with precision.

Consequently, the Court of Appeal applied interest and the additionalindemnity from a date situated roughly at the halfway point of the period during which Sucroë generated revenue, i.e. July 1, 2001. [92] The Court of Appeal’s solution was fair in the circumstances of this case. The parties ordered to disgorge profitsshould not pay interest from a date clearly prior to the period during which the bulk of the profits were earned. F. Non-pecuniary Damages [93] The trial judge awarded Robinson $400,000 in non-pecuniary damages as compensation for his psychologicalsuffering.

He analogized Robinson’s psychological suffering to the injury sustained by a victim of defamation. [94] The Court of Appeal reduced this award of damages to $121,350. It reasoned that Robinson’s physical symptoms ofshock and depression stemmed from a bodily injury. Therefore, the trial judge should have applied the cap on non-pecuniary damagesestablished by this Court in the Andrews trilogy.

(1) Applicability of the Andrews Cap [95] In the Andrews trilogy, this Court set a cap of $100,000 on the non-pecuniary losses that can be recovered followingcatastrophic bodily injury. Non-pecuniary loss is a broad category that covers elements such as “loss of enjoyment of life, estheticprejudice, physical and psychological pain and suffering, inconvenience, loss of amenities, and sexual prejudice”: Quebec (PublicCurator) v. Syndicat national des employés d

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