Copyright Curiosity

Earlier today, the Supreme Court of Canada released its decision in Cinar Corporation v. Robinson2013 SCC 73. The Court upheld the findings of liability and modified the award of damages, including punitive damages. Some of the issues considered by the Court included determining “substantial part”, the admissibility of expert evidence, disgorgement of profits under the Copyright Act and punitive damages.

The decision is an appeal from the Quebec Court of Appeal (2011 QCCA 1361), in turn an appeal from the trial decision, 2009 QCCS 3793. The plaintiff, Robinson had developed a children’s TV show called “The Adventures of Robinson Curiosity” which he presented to the defendant, Cinar. Several years later, Cinar developed a show, “Robinson Sucroë”. The defendants appealed findings of liability. The plaintiffs appealed the Quebec Court of Appeal’s reduction of the award of punitive and disgorgement of profits.

The Supreme Court, in a unanimous decision written by Chief Justice McLachlin, upheld the Quebec Court of Appeal decisions on liability and allowed, in part, the damages appeal.

Substantial Similarity

The Court rejected a ‘piecemeal’ approach to determining infringement when determining if a ‘substantial part’ has been taken.

[26] 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” … 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. [references removed]

[28] 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.

The court considered with to apply a three part test proposed by the defendants (a) what elements were original; b) exclude non-protectable pieces; and c) compare what remains to the defendant’s work) or an “abstraction-filtration-comparison” approach used for software in the United States:

[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.

“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.” [39] “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.” [46]

The Supreme Court held that no substantive and palpable error were made by the trial judge on the finding of ‘substantiality’.

Expert Evidence

In this case the Court held that expert evidence on substantiality was admissible. The Court stated that while the perspective of the lay person is a useful one, expert evidence may be called up:

[51] … 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.

In this case, the “lay person” was a five-year old, and the nature of the works made them difficult to compare. The Plaintiff’s work was a “sprawling unrealized submission for a television show” while the defendants’ show was a finished show that had aired on television.


The Court reviewed the remedies granted by the lower courts. It reinstated profits from the sale of the soundtrack on the basis that the trial judge could not be dissociated from the profits derived from the infringing material and this factual conclusion ought not be disturbed.

For disgorgement of profits, the Supreme Court agreed with the Court of Appeal that the remedy could only be awarded to prevent individual defendants from retaining a wrongful gain [87] and defendants could not be liable for gains of co-defendants. The Court also considered the application of joint liability under the Charter and the Quebec civil code for the various remedies.

The Supreme Court reduced the punitive damages to $500,000 from the 1 million ordered by the trial judge but rejected the $250,000 awarded by the Court of Appeal as failing to “fully reflect the gravity of the conduct and the need to deter others from engaging in similar conduct.” [141]

Copies of the parties’ factums and video of the arguments are available on the Supreme Court’s website – 34466.

More information on other intellectual property proceedings at the Supreme Court are available on my Supreme Court litigation page.

In other Supreme Court news, the Court reminded counsel in a Notice of the Profession about substantial changes to Court procedures for serving and filing materials, particularly electronically.