On December 23, 2013, a unanimous Supreme Court of Canada issued
its decision in the copyright infringement action involving the
children's cartoon television show "The Adventures of
Robinson Curiosity" ("Curiosity") and the impugned
copy "Robinson Sucroë" ("Sucroë").
The appeal required the Court to assess a key area of copyright
law: whether a substantial part of a work had been
reproduced. This was a significant issue since there had been
no literal copying and it is a well establsihed principle of
copyright law that there is no copyright protection for
ideas. Rather, it is the original expression in a work that
is protected. The decision also addressed the role of expert
evidence in infringement actions, the vicarious liability of
officers and directors, and the assessment of damages.
The Court's consideration of whether a substantial part of
the work had been reproduced is of considerable interest since the
Court made it clear that there could be infringement even if the
defendant did not engage in any literal copying. On the issue
of a substantial part, the Court noted it is a "flexible
notion" that is a "matter of fact and degree",
concluding that "[a]s 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". The Court reiterated that a part is substantial
based on its quality rather than its quantity. Perhaps most
importantly, the Court acknowledged that the "Act protects
authors against both literal and non-literal copying, so long as
the copied material forms a substantial part of the infringed
work" and cited the House of Lords in Designers Guild Ltd. v.
Russell Williams (Textiles) Ltd.,  1 All E.R. 700 (H.L.) at
706, for the proposition that "... the "part" which
is regarded as substantial can be a feature or combination of
features of the work, abstracted from it rather than forming a
discrete part. ... [T]he original elements in the plot of a play or
novel may be a substantial part, so that copyright may be infringed
by a work which does not reproduce a single sentence of the
In applying this methodology, the Court reiterated that a
substantiality analysis cannot be conducted by dealing with the
copied features piecemeal, but 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 the
creator's skill and judgment expressed in his or her work as a
whole. The Court also emphasized that "the question of whether
there has been substantial copying focuses on whether copied
features constitute a substantial part of the plaintiff's work
– not whether they amount to a substantial part of the
defendant's work". As such, "[t]he 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". However, "[i]f 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".
Consequently, notwithstanding certain clear distinctions between
Curiosity and Sucroë, the Court upheld the trial judge's
qualitative and holistic assessment that Sucroë reproduced a
substantial part of Curiosity.
Also of interest in the IT context is the discussion regarding
the "abstraction-filtration-comparison" methodology which
is commonly applied in computer program infringement cases in the
U.S. and which the Ontario Court of Appeal had commented favourably
on in the Delrina Corporations v. Triolet Systems Inc. (2002), 17
C.P.R. (4th) 289. Although the Supreme Court adopted a
"qualitative and holistic" approach to assessing
substantiality, they did not rule out that
abstraction-filtration-comparison methodology could be applied in a
different type of case, such as a computer program infringement
Given the Court's emphatic dissuasion from a literal
piecemeal substantiality analysis and its reiteration from the
Court below that "[e]verything is therefore a matter of
nuance, degree, and context", it will be interesting to see
how the Court's guidance, which was based on a work over 25
years old, will be applied in today's modern era full of
remixes and mash-ups, and our ever growing access to more
information and inspiration.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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