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 established 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., [2001] 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 original”.

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 case.

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.

Martin Brandsma also contributed to this article.