Copyright is purely a creature of statute as expressed by section 89 of the Canadian Copyright Act R.S.C. 1985, c. C-42, as amended from time to time, ("the Act"): "No person is entitled to copyright otherwise than under and in accordance with this Act…" This fact impacts on all relevant issues surrounding a claim to copyright. Questions, such as, who is the author, who owns the copyright and, what subject matter is protected by copyright, are all answered within the four corners of the Statute.
This paper focuses on what qualifies a "work" or "other subject matter" as defined by the Act. No copyright is available unless you can categorize the material in question within one of several statutory categories.
That said, though, these categories are broad and quite flexible so that as new creations arise from the development of new technologies, it is relatively easy to pigeonhole them within a category, and, thus, expand the scope of the Act to protect aesthetically and economically valuable new products.
However, in defining what a "work" is for copyright purposes, the overall structure and purpose of the Copyright Act must be kept in mind and not the common everyday parlance of the word. The Federal Court stated it this way when considering sound recordings in Fly by Nite Music Co. v. Record Wherehouse Ltd. :
"I accept the defendant's proposition that a phonograph record, which is nothing more than a contrivance by means of which sounds may be mechanically reproduced, does not fit comfortably within the meaning of the word "work" as that word is used in ordinary parlance. Nevertheless. Its meaning must be determined in the context of the statute and, therefore, includes each and every thing in which the Act says copyright shall subsist, be that thing a product of the arts or a product of manufacture and technology".
EVERY ORIGINAL LITERARY, DRAMATIC, MUSICAL, ARTISTIC WORK
Section 5.(1) of the Act provides further guidance as to the scope of "works" that are proper subject matter for copyright: "Subject to this Act, copyright shall subsist in Canada…in every original literary, dramatic, musical and artistic work…".
"Every original literary, dramatic, musical and artistic work is defined in S. 2 of the Act to include:
"every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets, and other writings, lectures, dramatic or dramatico-works with or without words, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science".
These sections, which have their origins in the Berne Convention, provide three necessities for having a protectible work: it must be original, fit within one of the above noted categories of works and be "fixed" in some manner which is semi permanent.
Furthermore, caselaw has established that a work must fit within one of the four categories. The definition of "every original production" merely provides more information on the scope of the four categories. It does not expand copyright protection to works outside those categories, for example, a scientific invention that is the proper subject matter of patents.
TITLES
The statute is of very little assistance in defining the word "work" alone, apart from it having one or more of the characteristics of a literary, dramatic, musical, artistic work. (see fuller discussion, below). The word work is briefly and rather unhelpfully defined in Section 2 as "including the title thereof, where such title is original and distinctive".
This definition, as analyzed by the courts, has not been interpreted, generally speaking, to mean that a title, of and by itself, will qualify as a literary work because, on its own, a title, in almost all cases will not constitute a substantial enough piece of literary composition to qualify. However, a title, where original and distinctive, can form part of the copyright of the larger literary work to which it belongs, and in appropriate circumstances, infringement can be found from copying the title alone.
In most cases, though, the courts have found a title is not sufficiently original and distinctive to meet the definition For example, in the case of Francis Day & Hunter Ltd. V. Twentieth Century Fox Corp., the plaintiff was unsuccessful in preventing the defendant from using the song title "The Man Who Broke the Bank at Monte Carlo" as the name of a film because the title lacked sufficient originality and distinctiveness.
As Lord Wright stated it at page 359 of the decision:
"To break the bank" is a hackneyed expression, and Monte Carlo is or was the most obvious place at which that achievement or accident might take place."
On the other hand, a title such as "This Hour Has Seven Days" (Flamand v. Societe Radio-Canada) was considered an example of a title which possessed sufficient originality and distinctiveness that it would be subject to copyright because it was an unexpected combination of words, i.e. one would expect an hour to contain 60 minutes, but not seven days.
In the Flamand case, however, the title under review, "Médecine d'aujourd'hui" was considered highly descriptive of its subject matter and, therefore, not sufficiently original and distinctive to form part of the copyright in the publication.
ORIGINALITY
In addition to dividing protected works into categories, section 5(1) requires the works to be "original". The concept of originality under copyright law, as opposed to patent law, does not mean that the work must be "novel" or "unique." Rather, an original work is one that "originates' in its expression from the author and has not been copied from the work of another or from materials in the public domain. (Braedale Distribution Enterprises Inc. v. Safety First Inc.) ; Promotions Atlantiques Inc. v. Handcraft Industries Ltd.)
The author in creating a work that is original, in the copyright sense, must expend skill, labor and experience, or, as this requirement was expressed in the pre-eminent case of Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. "so long as work, taste and discretion have entered into the composition, that originality is established".
However, the level of skill, labor and experience required to meet the "originality" requirement is not cast in stone and each work will be examined by a court on its facts. As stated by Justice Tessier in the case of Editions Hurtubise HMH Ltee v. Cegep Andre-Laurendeau :
"What is the precise amount of the knowledge, labour, judgement or literary skill or taste which the author of any book or other compilation must bestow upon its composition in order to acquire copyright within the meaning of the Copyright Act of 1911 cannot be defined in precise terms. In every case, it must depend largely on the special facts of that case, and must in each case be very much a question of degree".
However, the caselaw is in agreement that the level need not be terribly high and many practical and "non-creative" works, (e.g. packaging labels, instruction manuals, recipes) will be original works, if not copied from elsewhere.
An extreme example of this principle found in Walter v. Lane in which sufficient originality was found in a reporter's written account of a public speech, which he had taken down in shorthand and then revised and punctuated. The work expended in committing the words to paper, then formatting them properly for publication, was seen as the creation of a separate copyrightable work, apart from the word, themselves, as chosen by the speech giver.
Similarly, in University of London Press v. University Tutorial Press the court found sufficient originality in exam questions, since they resulted from the teacher's skill, labour or experience in their drafting.
The concept of "originality" under Canadian law has been the subject of considerable scrutiny in recent years in respect of compilations and collections of data. Compilations are a form of work contained within several of the protectible categories, depending on their content. This paper examines these works in greater detail later.
FIXATION
Another requirement for a work to be subject to copyright is that it be sufficiently "fixed". Fixation is not a concept expressly defined in the Act, but rather is an implied requirement arising from the above–noted definition of "every original literary, dramatic, musical or artistic work", which speaks of a "production" in "whatever may be the mode or form of its expression".
In addition, section 3 of the Act, which enumerates the exclusive rights enjoyed by a copyright owner, expresses the primary "reproduction right" as the right to produce or reproduce the work, or any substantial part thereof, "in any material form whatever".
To have a "production" in a "mode or form" or to reproduce a work "in any material form whatsoever" assumes that the work must be sufficiently fixed that it is possible to make copies. Also as a practical matter, if a work is not sufficiently fixed, it will not be possible to compare that work to alleged infringing works to determine if they are substantially similar and, therefore, likely copied.
Fixation has also been discussed in caselaw. For example, in the case Canadian Admiral Corp. v. Rediffusion, Inc., the court found a live telecast of a football game did not qualify for copyright protection on a number of grounds, including that the signal carrying the game went out simultaneously with it being played and, then, disappeared into the ether. Therefore, no work had been "fixed" as required. Although this case has been statutorily overturned on other grounds, its findings on fixation remain valid.
That said, though, fixation need not be completely permanent. With the advent of the computer and digital technologies, courts have been both willing and creative to find that many electronic formats are still sufficiently permanent to embody a work for the purposes of making copies and comparison to other works. For example, software burned onto a computer chip was found to be a fixed literary work in the case of Apple Computers v. MacIntosh .
With these three basic requirements in mind, then, (a) categorization (b) originality and (c) fixation, I turn now to a detailed examination of the categories of "works" and "subject matter" under the Act.
LITERARY WORKS
The Section 2 definition of a literary work, like others in the Act, is not definitive, but rather provides a non-exhaustive guideline of some of the works included, i.e. "literary work" includes tables, computer programs, and compilations of literary works.
By using the word "includes" rather than "means" the category can be expanded to include both different existing works and future works produced by new technologies, provided such works fit within the general dictionary "ordinary sense" meaning of the word "literary". The concise Oxford Dictionary , defines the word as follows:
"literary: of, constituting, occupied with literature or books and written composition".
However, in defining what a literary work is, copyright law has focused on the element of "written composition" as opposed to being restricted to fine literature. In fact, the works that are expressly mentioned (i.e. tables, computer programs and compilations) were likely put in to confirm that the category was not restricted to literature, which possessed aesthetic merit, but rather, encompassed any work of a literary nature (i.e. text based), including the most mundane materials, such as labels, packaging text, advertising, instructional sheets or manuals, exam questions and answers , accounting forms and tax return forms
As was expressed in the case of Underwriters Survey Bureau Ltd. V. American Home Fire Assurance Co. :
"By the terms of the Copyright Act, a literary work includes maps…tables and compilations. The Act makes no requirement as to the value of a literary work; it requires an original literary work and it is sufficient if there has been labour, skill, time, ingenuity, selection or mental effort expended in the production of same".
And in Cardwell v. Leduc regarding protection of a form letter:
"Assuming for a moment that originality is conceded, I think, particularly as literary merit need not be of a high order, the plaintiff's composition discloses at least a modicum of literary merit attributable to his skill and ingenuity. This, added to the considerable time, care and effort which he devoted to it, in my opinion, is more than sufficient to endow the plaintiff's Speed-L-Opes with the quality of "a literary work" as defined in the foregoing s. 2(n)"
ORIGINALITY-PROTECTION OF EXPRESSION NOT IDEAS
It is a fundamental axiom of copyright that protection will extend only to the expression of an idea and not the idea itself; nor will it protect facts and information, only the manner in which such facts or information are expressed.
Therefore, literary works protect the textual expression and not ideas, concepts or facts contained therein. For example, the general idea for a play such as, "boy meets girl, boy gets girl, boy loses girl" is common place and available for use by the whole world, but a detailed expression of that idea, for example the musical "West Side Story", which includes specific dramatic elements, plot twists, scenes, sequences and dialogue, which tell a particular version of that common place story, will be protected against imitators.
The idea/expression line, however, is not always that easy to apply. For example, there have been differing decisions in different jurisdictions as to whether the structural format for a show is a sufficiently expressed work to be copyrightable . The more defined the elements of the show, the more written detail in its dramatic structure, the greater the likelihood that the format will be protected as a work.
Breaking news and information printed in newspapers, per se, is not copyrightable (although it may be protected under other areas of law, such as breach of confidence) but clearly the way the news is expressed in a newspaper article is protected. Therefore, the article cannot be copied, in whole or substantial part, without the author's consent, although facts from the article about newsworthy events may be copied.
Similarly, a concept or method of doing something will not be subject to copyright, although written instructions or sketches explaining or illustrating the concept or method would have copyright, such that they could not be copied verbatim.
For example, one can use the information in such a work, for example, a recipe to make a pie, but not make copies of the recipe. In another case illustrating this point, a series of different coloured rods of varying lengths used to teach arithmetic principles to children were found not to be copyrightable expression, but merely a tool for teaching arithmetic to children by a specific method (Cuisenaire v. South West Imports Ltd ). Therefore, the rods failed to be either artistic works or 3-dimensional reproductions of a literary work, (i.e. an accompanying pamphlet which described the rods).
FIXATION
It is also settled law that a literary work, although encompassing "textual" works, need not be fixed in a printed form to be protected. Since section 3 of the Act grants the author of a work the right to reproduce the work "in any material form whatsoever", the courts have held that a literary work can be embodied in an non-print medium, provided it is semi-permanent, as, for example, a computer program burned onto a computer chip.
Some types of literary works, such as computer programs and database compilations, have received considerable attention in recent years given their importance in the emerging digital age. These will be discussed in greater detail below.
TRANSLATIONS
As specified in Section 2 above, translations are included within the definition of "a production in the literary domain" and will themselves be subject to a separate copyright, which generally speaking, is owned by the translator. A translation transfers a literary work from one idiom to another and the translator must take into account the subtleties of each language. While respecting the original, a translation is rarely a verbatim word for word transfer from one language to another and, therefore, it takes a certain amount of skill, labour and creativity to produce .
As was stated in In the Matter of an Application for Certification Filed by The Writer's Guild of Canada , by an administrative tribunal, dealing with the employment rights of writers in Canada:
"The tribunal accepts that translation is a very specialized profession which requires a comprehensive understanding of a text in both the source language and the language into which it is to be translated, as well as familiarity with both cultures. To convey the meaning and style of the original work faithfully, a literary translator must have much of the same dramatic flare as the original creator".
However, as the translation copyright flows logically from the copyright in the original work, the translator may not exploit copyright in his/her translation unless the copyright owner of the original work has consented to the translation (see section 3(1), Pasickniak v. Dojacek).
However, a translation, although not specifically so limited by the statute, has been interpreted by the courts to be restricted to the transfer of a work from one human language to another, as opposed from one computer language to another.
In the case of Apple Computer Inc. v. MacIntosh Computers Ltd., the Federal Court of Appeal overturned the trial judge's ruling that the transfer of code from one computer language to another was a translation, finding that it was too mechanical a process and, therefore, amounted more to representing the original work in a different material form than a translation. The decoding of data does not change the original work in anyway, whereas, a translation from one human language to another will entail subtleties and nuances that require skill by the translator. In the Apple case, Mr. Justice Mahoney stated:
"The rendering of a literary work in code, for example, Morse or Braille, is, I think, properly characterized as a reproduction of the work, not as a translation. Indeed, since the respondent's programs originated in code, I do not see how one can properly speak of their translation at all. The fact that both source and assembly codes are called "languages" is simply an example of the anthropomorphic phenomenon to which I referred to at the outset".
He further stated:
"I agree with the learned trial judge that the conversion of a text into Morse code or short hand does not result in a different literary work and that the text, so converted, does retain the character of the original. That, however, does not lead to the conclusion that such is a translation for purposes of the Act. A person knowledgeable of Morse code or the particular short hand system could read the converted version and what would be heard would be the original text verbatim. Such a conversion is not, in my opinion, a translation within the contemplation of the Copyright Act. It is rather a reproduction of the original, the making of which was equally the exclusive right of the owner of copyright in that original.
COMPILATIONS
Another type of work, which initially found protection through caselaw as a literary work, akin to a collective work is that of a compilation, i.e. an original selection and arrangement of either (a) other copyright protected works or (b) public domain materials, such as facts and information, or some combination of both.
Compilations were only recently specifically defined within the Act, in response to Canada's obligations under the North American Free Trade Agreement ("NAFTA"), to clearly protect such works, especially collections of data. Prior to 1997, compilations were expressly mentioned within the section 2 definition of "every original literary, dramatic, musical and artistic work", but not further defined.
In 1997, the following definition was added to section 2 of the Act:
"compilation" means
(a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works, or parts thereof, or
(b) a work resulting from the selection or arrangement of data;
In addition, the section 2 definitions of "artistic", "literary", "musical" and "dramatic" works were amended to expressly include "compilations' of such works. It was also provided that where one compilation contains a selection and arrangement of works that falls into more than one category (e.g. literary and artistic), the compilation will be classified as falling within the category of "works" which make up the majority of its content.
As a practical matter, the courts in evaluating the new definition found that it merely codified the earlier caselaw on protectible compilations and did not change this area of the law.
In recent years, any attack on the status quo as established by the Canadian courts concerning compilations, has come from south of the border, where the level of originality required for a compilation under U.S. law was recently examined and raised in the land mark case of Feist Publications Inc. v. Rural Telephone Services Co. Inc. . Before examining this case in detail and its effect in Canada, one must first review the Canadian caselaw prior to Feist.
THE PRIOR LAW
As with all works under the Copyright Act, compilations must be original; in this case, in their selection and/or arrangement. The level of originality required, however, has been subject of much debate in Canada. A good summary of the test of originality for compilations was given by Madam Justice McLaughlin in Slumber-Magic Adjustable Bed Co. Ltd. v. Sleep King Adjustable Bed Co. Ltd. .
In this case, the Plaintiff had sued the defendant for using portions of the Plaintiff's advertising brochure in a competitive brochure. The brochure consisted of printed paper of 8"x11" with a slogan in large lettering at the top, followed by smaller text lettering, below which, there was a photograph of a woman using the bed, followed by a list of ailments for which the bed would be beneficial and a tear off mail card for a prospective customer to return to the Plaintiff. The reverse side had various text in the nature of promotional statements and testimonials and diagrams of the various adjustments that could be made to the bed.
In finding that the brochure qualified as a copyrightable work, Madam Justice McLaughlin focused on the arrangement of the materials, whether or not taken from other sources, as being the product of the Plaintiff's thought, skill and work. She stated that the overall arrangement of the work must be examined, not individual components and concluded:
"So long as work, taste and discretion have entered into the composition, that originality is established. In the case of a compilation, the originality requisite to copyright is a matter of degree depending on the amount of skill, judgement or labour that had been involved in making the compilation".
In support of this test, she relied on U.K. caselaw, including Ladbrooke (Football), Ltd. v. William Hill (Football), Ltd., in which a plaintiff's efforts in arranging statistical information on football coupons was sufficient to have created an original literary work. She also noted that there were limitations to the copyright in a compilation, namely, (a) the compiler could claim no copyright, unless he/she had a right to use the materials making up the compilation and (b) any component or idea contained in it could be copied without breaching the compiler's copyright, which rests not in the individual components, but the overall arrangement.
Finally she noted, at page 85 of the decision that:
"The result and arrangement was the product of its (i.e. the Plaintiff's work) and industry and is protected by copyright".
On balance, the U.K. law and the Slumber Magic case indicated that the level of originality lay primarily in the arrangement and need not be high, so long as some work, taste and discretion were involved. However, as some of their comments focused more on the industriousness and effort put into preparing the compilations, the test began to evolve in some cases to protect compilations, which were the result of significant labour, but where it was questionable whether the work required any skill or discretion.
The high watermark case, espousing this so-called "sweat of the brow" theory, was British Columbia Jockey Club v. Standen. The plaintiff, B.C. Jockey Club, published a daily printed sheet of horse racing information, called "The Overnight", which included items such as the date of the race, the race day number, the order of races, their length, the classes of eligible horses, positions at the post, the last date which each horse ran, assigned weight and assigned jockeys, weather and track conditions and the time of the first race each day.
The plaintiff had sued the defendant, who published a competitive product called "The Special News" in which he reproduced certain information from the Plaintiff's publication, namely, the order of races, the distance of the races, the list of horses, the jockeys for each horse and the assigned weights. Both parties agreed that the Plaintiff owned a copyright in "The Overnight" publication, as a whole, but the defendant argued it had not made a substantial use of anything except the essential facts compiled by the club.
The court held that, even though the defendant had adapted that copied information to his own style and added information of his own, he had still appropriated a substantial amount of the "work, skill, judgment and knowledge" of the Club. The court maintained that although the defendant had rearranged and republished the information in a different style, he still infringed.
Although, the case suggests it applied the same test (i.e. skill, judgment and labour), it appears, based on a review of the publications in issue, that the court really was protecting the plaintiff from having its labour of compiling factual information appropriated.
More specifically, the court looked favourably on a prior judgement concerning the same Plaintiff, wherein the same publication was found a copyrightable work. In that earlier case, the court stated:
"Now the layout or arrangement of data in "The Overnight" is not distinctive and indeed it is, if not in universal, certainly in general use at North American race tracks. By doing the things I have listed, the Plaintiff produced an entirely novel list of horses and other information for each race. In settling the conditions of the races, some knowledge, experience and exercise of judgement were required. In carrying it through the subsequent steps, stating it conservatively, an appreciable amount of time and labour was involved". (emphasis added)
This statement by the prior court, although paying lip service to the necessity of knowledge, experience and judgement, in fact, seem to focus more on "the appreciable amount of time and labour that was involved", particularly, given the courts admission that the actual formatting and layout was not particularly unique to the Plaintiff, but was a commonly used way of arranging items.
Furthermore, the court also paid lip service to the idea that there can be no copyright in information, but only in the composition or language chosen to express it, but then went ahead to find that the defendant had done more than copy information by appropriating "the labours and skills of the Club" which had gone into compiling the daily information. They again focused on the "pain staking tasks" which had been performed by the Club in assembling that information.
Finally, the court looked at older U.K. law, which focuses on appropriation of labour, for example, the case of Scott B. Standford , where Mr. Justice Wood stated:
"No man is entitled to avail himself of the previous labours of another for the purpose of conveying to the public the same information, although, he may append additional information to that already published".
Accordingly, this case stands in support of the "sweat of the brow" theory, i.e. even if you take information from another's compilation, you are still required to retrace the same assembly steps to find the information independently in order to avoid copyright infringement.
This, arguably, misapplication of the test of skill, judgment and labour was criticized by many copyright experts as crossing the line of protecting expression to protecting facts and information. Accordingly, when the case of Rural Telephone Services Co. Inc. v. Feist Publications Inc. came along, Canadian copyright law was ripe for a review of the "sweat of the brow" theory.
The Feist Case
In Feist, the plaintiff company, Rural Telephone, sought copyright protection for its White Pages Directory, which listed telephone subscribers' phone numbers, for a certain area in alphabetical order by surname, against being appropriated by Feist, who had reproduced the alphabetical listings in its own guide.
Rural Telephone annually published an alphabetized telephone directory for its service area consisting of the usual White and Yellow Pages. Feist sought to publish an area wide listing including 11 different service areas. The plaintiff was the only local phone company that refused to grant Feist a licence to use its subscriber listings. Feist, therefore, proceeded to copy the listings from the plaintiff’s directory. Some 1300 listings were copied from Rural’s 7700, including four fictitious ones included by Rural to trap potential copiers. Rural sued Feist for copyright infringement and both District and Appeal courts sustained the claim. They upheld the standard doctrine that White Page listings were copyrightable. By copying a substantial number of listings, instead of independently obtaining those listings, Feist was infringing Rural’s copyright.
In reviewing the case, the U.S. Supreme Court sought to reverse a line of U.S. jurisprudence concerning telephone listings and other types of factual collections which had also seemed to favour the "sweat of the brow" or "industrious collection" tests for originality, thereby extending copyright protection to the facts themselves, rather than the compilation's selection and arrangement.
The court denied protection to Feist's White Page Directory on the basis that its alphabetized order for the listings was highly mundane and lacked even a minimum level or "spark of creativity". The added requirement of a "spark of creativity" could be traced, the U.S. Supreme court reasoned, to both the U.S. Copyright Act and the U.S. Constitution. More specifically, the U.S. definition of a compilation in Section 101 of its Copyright Act reads as follows:
"A collection of pre-existing materials or data that are selected, coordinated, or assembled so as to constitute an original work of authorship"
The definition, then, specifically brought in an originality component as a statutory requirement. It also referred to authorship.
Furthermore, the United States Constitution, in Article 1 (8)(viii), gives Congress the power to "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries". The court interpreted the use of the term "authors" in this constitutional clause as meaning that originality was an indispensable element of authorship.
Accordingly, the U.S. Supreme Court formulated a test of originality somewhat different and arguably higher than the standard in Canada by requiring "a modicum of creativity", which seemed not to be synonymous with the test of "skill, judgement and labour".
The Tele-Direct Case
A few years after Feist, in 1996, a Canadian court looked at a somewhat similar situation, which paved the way for an in-depth review of the test of originality for factual compilations. In Tele-Direct (Publications) Inc. v. American Business Information Inc., Tele-Direct, a producer of Yellow Page directories for Québec and Ontario, sued a database company, American Business Information ("ABI"), who had taken certain information and data from the plaintiff's Yellow Page directories, including business listings of names, addresses and phone numbers and the Headings that these various business types were compiled under, for use in ABI's database. ABI's database was used to generate information products, such as mailing lists and labels, categorized by certain business sectors.
In the litigation, both parties had made concessions, namely, Tele-Direct admitted that there was no copyright in the raw subscriber data (i.e. names and phone numbers) that it received, under licence, from Bell Canada and ABI admitted that the plaintiff's Yellow Pages directories, in terms of their page layouts, were subject to copyright.
ABI took only the listings and the Heading categories prepared by Yellow Pages, but did not reproduce any layouts, graphics, logos or ads that Yellow Pages had devised.
Accordingly, the issue boiled down to whether the subscriber data, as arranged by Yellow Pages under Headings, was a copyrightable compilation or merely unprotected data.
In arriving at its conclusion, the trial judge relied squarely on the Slumber Magic Adjustable Bed case and Madam Justice McLaughlin's comments, set out earlier in this paper, as the appropriate test. The court stated at page 138:
"In particular, the facts must be examined with a view to determining the degree to which Tele-Direct exercised skill, judgement or labour in the overall arrangement of the compilation of the information in its directories"
Having done so, the court found that a large percentage of the information in the Yellow Page directories was not subject to copyright (i.e. the subscriber information) and that despite the significant labour Yellow Pages expended to sell ads in addition to the initial subscribers listings and to verify the listings' accuracy and update them, there was not a sufficient level of skill and judgment for the compilation to be protectible.
For example, when reviewing the various business headings used by Yellow Pages, it was noted that (a) many telephone and directory companies across the U.S. used the same Headings, (b) only 981 of the Headings were unique to Canada and (c) out of those, only 254 were used in the Tele-Direct directories in Ontario and Québec. Therefore, Tele-Direct's Headings were found to be virtually indistinguishable from the headings in all Yellow Pages directories in the United States and Canada.
Accordingly, the court was lead to conclude at page 139:
"…Tele-Direct arranged its information, the vast majority of which is not subject to copyright, according to accepted common place standards of selection in the industry. In doing so, it exercised only a minimal degree of skill, judgement or labour in its overall arrangement, which is insufficient to support a claim of originality in the compilation so as to warrant copyright protection".
Interestingly, the trial judge, finding no copyright after applying the Canadian standard, did not feel he had to consider the Feist case, nor whether the American approach ought to be followed in Canada.
Not surprisingly, Tele-Direct was appealed to the Federal Court of Appeal and it was at this level that the effect of the Feist case was felt.
The Tele-Direct Appeal Decision
On appeal, Mr. Justice Décary began by accepting the facts and the trial judge's application of the Slumber Magic case to those facts as correct. However, instead of ending the appeal at that point, he then went on to comment on the amendments to the Act, which had added a definition of compilation into copyright law after the Tele-Direct litigation had commenced, and to compare the Canadian and U.S. law on this point.
Although, he concluded ultimately that the amendments did not alter Canada's state of the law, he ruled that the requirement for a minimal "spark of creativity", in addition to the skill, judgement and labour test, in order to produce an original intellectual creation was also part of the Canadian test of originality.
He stated at page 303-304 of the decision:
"I have come to the conclusion that the 1993 amendments did not alter the state of the law of copyright with respect to compilations of data. The amendments simply reinforce in clear terms what the state of the law was, or ought to have been: the selection or arrangement of data only results in a protected compilation if the end result qualifies as an original intellectual creation".
The importation of this new language (i.e. original intellectual creation), came from Article 1705 of the North American Free Trade Agreement, ("NAFTA") which stated that signatory countries will protect works covered by Article 2 of the Berne Convention, including, in particular: "compilations of data or other materials, whether in machine readable or other form, but which by reason of the selection or arrangement of their contents constitute intellectual creations, shall be protected as such". (emphasis added)
This article in NAFTA was also the bridge used by the judge to more closely align U.S. and Canadian law concerning compilations. He states at page 304:
"Another impact of the 1993 amendments may well be that more assistance can henceforth be sought from authoritative decisions of the United States courts when interpreting these very provisions that were amended or added in the Copyright Act in order to implement NAFTA. I do not wish to be interpreted as saying that Canadian courts, when interpreting these provisions, should move away from following the Anglo-Canadian trend. I am only suggesting that where feasible, without departing from fundamental principles, Canadian courts should not hesitate to adopt an interpretation that satisfies both the Anglo-Canadian standards and the American standards where, as here, it appears that the wording of Article 1705 of NAFTA and, by extension, the added definition of compilation in the Canadian Copyright Act, attracts, to a certain extent, the wording of the definition of compilation found in the United States Copyright Act.
In reestablishing that the level of originality goes beyond labour, even under the traditional Canadian test, Mr. Justice Décary states at page 307 that the word "or" should be used conjunctively:
"It is true that in many of the cases we have been referred to, the expression "skill, judgement or labour" has been used to describe the test to be met by a compilation in order to qualify as original and, therefore, to be worthy of copyright protection. Seems to me, however, that whenever "or" was used instead of "and", it was in a conjunctive rather than a disjunctive way. It is doubtful that considerable labour combined with a negligible degree of skill and judgement will be sufficient in most situations to make a compilation of data original… While not defined in the Act, the word "author" conveys a sense of creativity and originality. I do not read these cases, which have adopted the "sweat of the brow" approach in matters of compilations of data, as having asserted that the amount of labour would in itself be a determinative source of originality. If they did, I suggest that their approach was wrong and it is irreconcilable with the standards of intellect and creativity that were expressly set out in NAFTA and endorsed in the 1993 amendments to the Copyright Act and were already recognized in Anglo-Canadian law".
Finally, Mr. Justice Décary at page 309 of the decision summarizes the application of the test to the compilation under review in Tele-Direct, in language highly similar to that of the U.S. Supreme Court in Feist, namely:
"In the case at bar, it can hardly be said that the sub-compilation was a "new product of inventive labour", to use the learned professor's words or that it amounted to an "intellectual creation" within the meaning of Article 1705 of NAFTA. The compilation of the in-column listings is of such an obvious and commonplace character as to be unworthy of copyright protection. Certain compilations of routine data are so mechanical as to devoid of a creative element".
He also reconciles earlier U.S. cases raised with him, that appeared to protect "sweat of the brow", by finding that their facts actually involved works where some creative element was involved. He also suggests, on the basis of the U.S. case of Key Publications Inc. v. China Town Today Publishing Enterprises Inc., that works that would likely lack originality would be those arranged in alphabetical, chronological and sequential order or other listings of data as mechanical groupings.
Interestingly, although the appeal decision in Tele-Direct seems to indicate that a higher standard of originality has been adopted than previously thought, the actual application of the new test has still resulted in works of arguably minimal skill and creativity receiving protection. For example, in an appeal decision also delivered my Mr. Justice Décary, namely, Edutile Inc. v. Automobile Protection Associations (A.P.A.) a small portion of an Automobile Price Guide, developed for consumers by the plaintiff, was found sufficiently creative in its selection and arrangement even, though, arguably, only a negligible amount of skill and judgment was involved. The Guide included three columns, which tracked prices in three different markets for automobiles, namely, the trade-in value to a dealer, the value upon private resale and the retail sale price (i.e. what you would pay at a dealership). The defendant had copied this feature in its own guide and had been sued by the plaintiff. At trial, the work was found not sufficiently original to be afforded copyright protection. The plaintiff appealed.
In an appeal, Mr. Justice Décary cited his recent decision in Tele-Direct as dispositive of the test to be applied but found that there was originality, not so much in the fact that the plaintiff chose three columns or that there were various markets selected, but rather the originality arose from the plaintiff combining the private sale column with the retail price column and placing them side by side.
In support of his view that this was an innovative and creative step in the arrangement, he relied on the defendant's own testimony, wherein a representative expert in the field, admitted that such a combination had not been done in the marketplace before and, in his view, was quite a "brilliant" and "innovative" idea.
In addition, this "higher" test did not preclude copyright being found in the listings for a specialized directory for Italian speaking people and businesses. The subscriber list of names and phones numbers and addresses was compiled by the plaintiff by selecting from the usual telephone listings those personal names and business names, which appeared to be Italian in origin. This subscriber base was taken by the defendant but not any of the other clearly protectible aspects of the plaintiff's directory, such as the page layouts, advertisements, research on regions of Italy, photographs etc.
Therefore, in large part, the addition of a "creative spark" element to the test of originality for compilations has not had a profound effect on the types of works found to be copyrightable.
Furthermore, it appears that the "spark of creativity" test has been short lived in Canada, given the recent Federal Court of Appeal decision in CCH et al. v. Law Society of Upper Canada , which reversed Mr. Justice Décary's judgement, by finding that, under Canadian law, no element of creativity of innovation was required to meet the standard of originality.
CCH Canada Limited et al. v. The Law Society of Upper Canada ("LSUC")
A group of publishers, CCH, Thomson Canada Limited, and Canada Law Book ("Publishers") were the creators of various legal materials, such as case reporting series and textbooks. They had sued the LSUC for copyright infringement on the basis that the LSUC, through its Great Library, (a) operated a non-profit custom photocopying service whereby the Library made single copies of the plaintiff's materials upon receiving individual requests from patrons and (b) allowed patrons to make copies of the Publisher's materials at freestanding photocopiers placed in the Great Library.
The specific works in issue in this case were: (a) three reported judicial decisions; (b) the head notes for these judicial decisions; (c) one case summary, i.e. a concise, point form summary of the facts, reasons and conclusions of the case; (d) the Consolidated Topical Index from Canada GST Cases (1997) G.S.T.C.; (e) an annotated statute (i.e. Martin's Ontario Criminal Code Practice 1999); (f) a textbook (i.e. "Economic Negligence: The Recovery of Pure Economic Loss"); and (g) a monograph entitled "Dental Evidence" from a textbook.
The trial judge had held that (a) copyright did not subsist in the reported judicial decisions, the head notes, the case summary and the topical index and (b) LSUC did infringe the copyright subsisting in the other above-mentioned works of the Publishers' by (i) reproducing the works and (ii) knowingly distributing and possessing infringing copies of the works.
On appeal, CCH claimed that the judge erred in not finding copyright in the reported judicial decisions, the head notes, case summary, and topical indexes.
Mr. Justice Linden, in the appeal, reaffirmed that to be subject to copyright under the Act, the work must be "original". The trial judge in CCH, relying on the Tele Direct case and referring to Section 1705 of NAFTA, (which required protection for compilations, which are "intellectual creations"), had held that to be original a work must involve "imagination or creative spark". The Publishers' works, although they entailed significant skill, judgment and labour, lacked this "imaginative creative, spark" in the trial judge's opinion and, therefore, were not subject to copyright.
Justice Linden disagreed that "imagination" or "creative spark" were essential to a finding of originality under Canadian law. He stressed that these were not statutory requirements under our Act, (i.e. there was no reference in our Act to intellectual creations) and neither the Berne Convention nor NAFTA required a more onerous standard for protection than that set out in the Canadian Act. He also noted that there were significant differences between the U.S. and Anglo-Canadian standards on the issue of originality.
In determining a definition for "original" he reviewed substantial UK and Canadian caselaw and summarized the traditional Canadian standard as follows:
"The requirement of originality means that the product must originate from the author in the sense that it is the result of a substantial degree of skill, industry or experience employed by the author…the effective meaning of the requirement of originality is that the work must not be copied from another"
This standard was relatively low and meant, he stressed, that there need not be any novelty or a high level of skill involved but, in most cases, mere labour would not meet the test because any work created simply through labour usually points to slavish copying. The definition of originality indicates that the work must not be copied from that of another, but rather must create some new material.
Therefore, Justice Linden held that the trial judge erred in his application of the Tele Direct case by stating that it supported a view that a higher standard of originality was now required, based on the U.S. Feist case and NAFTA. He reaffirmed that Canada's obligations under NAFTA were not intended to alter the standard of originality of Canadian copyright law.
He also noted that Canadian caselaw frequently cautions that U.S. copyright law should be applied carefully by Canadian courts, due to significant differences in each country's law on certain issues, such as originality. He indicated that the test of originality did not enter the U.S. Copyright Act until 1976 (rather it was applied through caselaw) and seemed to add this requirement of creative spark (see Mathew Bender v. West Publishing Co.).
In conclusion, on this point, he stated:
"As noted above, the Supreme Court of Canada has warned that "United States court decisions…must be scrutinized very carefully because of some fundamental differences in copyright concept…(Compo). The wisdom in that advice is well demonstrated in this case, where the American principle sought to be imported is based upon an unstable foundation that has not been tested thoroughly. Although, the trial judge prefaced his remarks with a disclaimer that he preceded with some trepidation, he failed to conduct any substantive analysis of the American standard of originality. Therefore, he inadvertently entangled the standards set out in Feist and applied in Bender v. West with the Canadian touchstone of originality. As discussed above, there is no universal requirement of "creative spark" or "imagination" in Anglo-Canadian copyright law".
He also re-emphasized that the definition of the word "original" is not closed nor statutory in nature, and is often determined on a case-by-case basis in association with a host of words and phrases, such as "labour", "judgment", "skill", "work", "industry", "effort", "taste" or "discretion". He stated at page 13:
"To me, these are all possible ingredients in the recipe for originality, which may be altered to suit the flavour of work at issue. Each term may help to determine whether a work, is, in fact, original but it is a mistake to treat any of these words as if they were statutory requirements. These are not, in themselves, pre-requisites to copyright protection, but rather evidence of the sole pre-requisite, originality. To determine whether or not the materials at issue are "original" works, a principled and a reasoned approach based upon evidence is required, not reliance on a particular word or phrase that merely seeks to explain the concept of originality.
Having realigned the originality test, Mr. Justice Linden then went on to find the case summaries were sufficiently original in that this condensation of judicial reasons required significant skill and judgment in their composition and discretion in their presentation.
Similarly, Justice Linden concluded that the topical index was original because its authors exhibited skill and judgment in selecting and arranging the various elements, such as cross referencing to other headings within the index and decisions were required as to where certain information ought to appear. In respect of the monograph, the way its information was selected and arranged was similarly found to be original.
At trial, the Annotated Statute and the Textbook had been found subject to copyright by the trial judge and there was no appeal from those findings. The appeal court merely reaffirmed that the trial ruling on these works was obviously correct.
PROTECTION OF NON-ORIGINAL DATABASES BEYOND COPYRIGHT LAW
Copyright law then remains the primary means for seeking protection of databases in Canada. B & S Publications Inc v Max-Contacts Inc. is a recent example of how the court's consideration of database protection is limited to the domain of copyright law.
Given that a comprehensive scheme for protection of "non-original" databases is currently not in place, the question arises as to whether there exists alternative grounds for protecting "non-original" databases against piracy. In response, two remote possibilities exist: (a) a claim under s.7 of the Trade-Mark Act, governing "Unfair Competition" and; (b) a claim under breach of confidential information. Neither of the two, however, have been or are likely to be successful in Canada.
The claim of unfair competition under s.7 of the Trade-Mark Act has not succeeded in Canada in the context of protecting databases from infringement. The attempt was recently addressed (and repudiated) in ITAL-Press Ltd. v Sicoli. It is unlikely that this section could provide protection against the "taking" of data from a database or compilation, given the most applicable provision, 7(e), is unlikely constitutionally valid. The court further stated that the remaining provisions of "section 7 of the Trade-marks Act can only be invoked where a "trade marks scheme: is pleaded and established by evidence."
It has been noted, that on a provincial level, any "province may create a statutory tort or delict in the nature of unfair competition that may provide relief for misappropriation values, which could include the unauthorized taking of data from a database." However, "this has not been done," and "such a tort is broad and difficult to define or limit."
(b) While theoretically databases may be protected as confidential information or trade secrets, in practice, this claim faces at least two legal difficulties. First, as Professor Robert Howell notes, "the contents of data if accessible to the public cannot be said to possess the requisite 'quality of confidence'." Moreover, the stipulation that breach of confidence proceedings apply "to situations where information is 'imparted' to another (rather than being 'acquired' by that other)" further limits the doctrine's applicability to the "taking" of data.
THE CANADIAN GOVERNMENT'S PROPOSAL FOR REFORM
In June 2001, the federal government addressed the issue of database protection in its report, A Framework for Copyright Reform :
In Canada "original" databases are protected under copyright law. However the Federal Court of Appeal has held that "non-original" databases are not protected. The issue is therefore whether non-original databases should be protected under the Copyright Act and, if so, what form that protection should take. Also at issue is whether such databases ought to be protected under traditional copyright principles or according to other principles.
PROTECTION OF NON-ORIGINAL DATABASES BEYOND COPYRIGHT LAW
The court in Feist recognized that protection for "unoriginal" compilations requiring substantial time and effort, may in certain circumstances be available under the doctrine of unfair competition. Nimmer in his text presents the current state of US law on this matter as follows: …there is room for litigants to seek to protect factual compilations of data even the post-Feist era – a secret list of customers and hot news, to name two examples. But such efforts must be limited to circumscribed situations, to avoid swallowing the Supreme Court's ruling that the public is generally free to reproduce factual materials that have been widely disseminated. Those courts have ruled correctly that have checked the attempts of some overreaching litigants to avoid this ruling altogether under guise of legal rubrics outside the copyright gambit.
However the current debate in the United States is whether the doctrine of unfair competition is sufficiently protective, or whether further protection for makers of databases should be granted by adopting a distinct set of property rights. Proponents of the latter view advocate for implementation of sui generis rights, in accordance with the EU Database Directive, discussed below. Various steps have been taken in the effort to advance sui generis rights for database makers in the United States, but the government has yet to implement a new scheme of protection.
THE EU DATABASE DIRECTIVE: COPYRIGHT PROTECTION
The EU Database Protection Directive established that databases can be afforded copyright protection so long as the selection and/or arrangement involved in the compiling of the data meets the minimum creativity threshold and can accordingly be viewed as the author's own intellectual creation. This position is analogous to that set out in Feist, in the US, and Tele-Direct, in Canada.
THE EU DIRECTIVE: SUI GENERIS DATABASE PROTECTION
More significantly, the Database Directive introduced a unique sui generis right for databases intended to function independently from any copyright. As stated in Article 1(1), the Directive "concerns the legal protection of databases in any form." The purpose of the right is to grant protection to makers of databases whose compilations, though the product of "substantial investment," do not possess the requisite "originality" factor and were previously left unprotected.
Under this scheme, the maker of a database has the right to prevent extraction and/or re-utilization of the whole or of a substantial part of the contents of the database. This "taking" is to be evaluated qualitatively and/or quantitatively. The taking of an insubstantial part of the database is permitted under the Directive.
Unlike the term of protection under copyright, the grant of protection under the Directive is potentially perpetual. More specifically, while the right is granted for a limited period of 15 years, substantial changes to the database, amounting to a new substantial investment, qualify the resulting database for a further 15 year protection period.
COMPUTER PROGRAMS
Computer programs expressly fall within the category of literary works in the section 2 definition. Since 1988, they have also had a specific definition, namely:
"Computer program" means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result".
Prior to 1988, and the express mention of computer programs, caselaw established that they were already protected. In Apple Computer Inc. v. Macintosh Computers Ltd. Madam Justice Reed held that source code and object code, written in both human and computer language, (i.e. binary notation of 0's and 1's) fit within the category of literary works. Furthermore, the code, embodied in a computer chip, was a reproduction of the literary work in another material form, as provided for in Section 3, which states that "the copyright owner has the exclusive right to reproduce a work, in whole or substantial part, in any material form whatsoever".
The Apple case also provided that the method of fixation did not have to visible to the naked eye as long as it could be produced in visible form or in a form that was in some way perceptible.
After the definition of a computer program was added, the focus shifted from whether software was within a protectible category to whether the copyright protection extended only to the source and object code or whether the definition was broad enough to cover "non-literal" elements of the program, such as the program's structure, its interfaces, and screen displays. In the 1990's in the United States, there had been a line of cases which extended the scope of copyright in software to include such non-literal elements, almost to the point of protecting concepts and elements driven by the functions the software had to perform, which was, again, outside the area of what copyright was meant to protect .
In reaction to these cases, was the court's decision in the case of Computer Associates v. Altai which, without denying that copyright could extend to original non-literal aspects of a computer program, provided a three prong test for weeding out non-original, non-literal elements and then assessing the work remaining to see if it had been infringed.
This abstraction, filtration, comparison test appears to have been accepted in Canadian law, most particularly in the case of Delrina Corporation v. Triolet Systems Inc. Delrina was the owner of copyright in a computer program called Sysview, which had been designed as a monitoring tool for users of HP 3000 computers to generate data on what functions that computer was executing and its efficiency.
Sysview was written by a former employee of Delrina, named Duncomb, who subsequently left and started his own company, Triolet. He developed at Triolet a program called Assess, which performed the same monitoring functions for HP 3000 computers with some improvements. However, Triolet's program was essentially rewritten and Duncomb only, incidentally, copied 40 lines of code from the Sysview program, which consisted in total of 14,000 lines of code.
Delrina sued Triolet alleging copyright infringement of both the literal and non-literal elements, such as the interfaces, screen displays.
At trial, it was held that there had been no infringement. The copying of code was minimal and, therefore, not a substantial taking. On the issue of whether any protectible non-literal elements of the program had been taken, the court began by confirming that under the definition in the Copyright Act, (i.e. that a computer program was "a set of instructions or statements…to be used directly or indirectly on a computer and ordered to bring about a specific result") should not be so narrowly interpreted as to be limited to instructions contained in the source and object code. Mr. Justice O'Leary stated at page 27:
"It is submitted that copyright does not subsist in the non-literal portions of the program, but that is to say, what the object code causes the computer to do or create, such as the display screens the program produces, which contain a menu of the information that a user of the program that command the computer to produce. I do not accept that proposition. To begin with, the set of instructions that form part of a computer program are not just those instructions that are embodied in the tape or disk but include as well those instructions recorded in the program's manual, which instructions give detailed directions as to how to use the program. It is only by following the manual's instructions that one without computer experience can make use of the program. By using the instructions in the manual and touching the required keys on the terminal keyboard, the user of the program causes the computer to create a screen display in form and content dictated by the way it was programmed by the object code. The screen display so produced is the reproduction of the object code in a different "material form". I am here talking about the style and format of the screen display, not the individual numbers the computer may fill in on the screen when asked to do so by the operator of the program".
On this basis, and favourably comparing the Canadian definition of a computer program to the American definition, both of which speak of fixation of the program in any medium whatsoever, he found that screen displays and interfaces, generally speaking, could be protected. Having concluded that, he went on to decide whether the particular screen display/user interface in question was protected by copyright as it was sufficiently original.
In this regard, he applied the abstraction-filtration-comparison test for determining originality, as adopted in the case of Computer Associates v. Altai. It is only when this test has been applied that one can more clearly see the general idea behind the program (i.e. how it is to function) and whether that idea is expressed in an original way.
At page 4741 of the Altai decision, the Second Circuit of the United States Court of Appeals summarized this approach to reviewing non-literal aspects of a program as follows: "… the court would first break down the allegedly infringed program into its constituent structural parts. Then by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas and elements that are taken from the public domain, a court would then be able to sift out all non-protectible material. Left with a kernel, or possibly kernels, of creative expression after following this process of elimination, the courts last step would be to compare this material with the structure of the allegedly infringing program. The result of this comparison will determine whether the protectible elements of the programs at issue are substantially similar so as to warrant a finding of infringement".
At the first step of abstraction, one isolates the program's structure, as on a spectrum, beginning with the code and ending with an articulation of the program's ultimate function. You then trace the steps along this spectrum to determine which of the elements involved along the way are non-protectible.
This second step of filtration eliminates those elements that may have been dictated by function or which contain elements that may be found in the public domain (i.e. commonly used programming techniques or a so-called "bag of tricks" often used by programmers). Once such non-protectible elements are removed, anything remaining, so-called nuggets of original work, are then compared to the allegedly infringing program to see if any of that has been copied.
The court in Delrina concluded that the proper approach was similar in Canada, stating at page 37:
"Whether a Canadian court should adopt the abstraction-filtration-comparison method in deciding an action for copyright infringement or some other similar method, it seems clear that before a computer program or some part of it can be held to be copyrightable, some method must be found to weed out or remove from copyright protection, those portions which, for the various reasons already mentioned, cannot be protected by copyright. After the portions that are not copyrightable have been filtered out, there may or may not be any kernels or golden nuggets left to which copyright can attach".
Turning then to the case at hand, the court found that the evidence overwhelmingly showed that the many similarities between Sysview and Assess could be accounted for as being the logical or only way of accomplishing a particular task at hand, or that the particular routine came from the public domain or was dictated by the makeup of the HP 3000 computer. All of these reasons for the similarities explained away copying and denied copyrightability to the non-literal elements in Sysview
The Delrina decision was appealed, with a judgment recently issued in March 2002. The court dismissed the appeal and upheld the trial judge's ruling that no copyrightable aspects of the Sysview program had been copied by Triolet.
One of the grounds of appeal, however, was that the trial judge had erred in denying copyrightability to the non-literal aspects of Sysview because he had applied the U.S. Altai test which, the appellant maintained, required a different standard of originality than that under Anglo-Canadian law, which rewarded skill, judgement and labour. More specifically, the appellant argued that the trial judge had made an incorrect assessment by looking at aspects of the Sysview program to determine copyrightability rather than looking at the program as a whole.
For this point, Delrina relied on the U.K. case of Ladbrooke (Football) Limited v. William Hill (Football) Limited . However, the appeal court felt that the trial judge had applied the right principles, as set out in the Ladbrooke case. Although, Ladbrooke suggested that dissecting a work into its components was not the proper approach, the case also stated:
"The reproduction of a part, which by itself has no originality, will not normally be a substantial part of the copyright and, therefore, will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and, therefore, the courts will not hold its reproduction to be an infringement".
The court pointed out that this same approach of not protecting portions of a work, which lacked originality by themselves, has been followed in other Anglo-Canadian computer cases such as John Richardson Computers Ltd. v. Flanders and Prism Hospital Software Inc. v. Hospital Medical Records Institute .
The appeal court also distinguished the difference between someone claiming copyright in non-protectible elements, that have been arranged in an original fashion (i.e. creating a compilation), and the case at hand where it was clear on the evidence that the method of arranging the elements in the Sysview and Assess programs was dictated by functional considerations or otherwise not protectible by copyright.
Although, the trial judge specifically alluded to the U.S. caselaw and Altai, in particular, the appeal court found no error in that. It acknowledged that, although, in the U.S. the merger doctrine (i.e. where only one or a small number of ways of doing something exist, the idea merges with the expression) had perhaps been applied with greater rigor than in Canada, the idea/expression dichotomy, generally speaking, was still recognized in Anglo-Canadian law and there was no copyright in an arrangement system, scheme or method for doing a particular thing. To do otherwise, would be to grant a monopoly to one person, but the court also acknowledged that the English/Canadian approach did, to some extent, recognize skill and labour in the creation of a work and would, therefore, provide protection in instances where there may be a limited way of expressing an idea.
In conclusion, then, the appeal court found that the trial judge had kept in mind all the proper aspects of the Anglo-Canadian law regarding the spilt between idea and expression in mind and applied them to the evidence presented. The appeal judge specifically pointed out that, in coming to his conclusion, the trial judge specifically said that he did not know whether a Canadian court should adopt the Altai abstraction-filtration-comparison method or some other similar method, but there needed to be some way in which non-protectible elements could be "weeded out".
In summary, the appeal court stated at page 307:
"The merger doctrine is a natural extension of the idea/expression distinction which, as I have said, is fundamental in copyright law in Canada, England and the United States. Clearly, if there is only one or a very limited number of ways to achieve a particular result in a computer program, to hold that way or ways are protectible by copyright could give the copyright holder a monopoly on the idea or function itself".
The appeal court then reviewed in detail the similarities that the trial court had found between the Sysview and Assess programs and confirmed each could be attributed to either elements found in the public domain (i.e. items that appeared in other third party applications which were in the public domain), or solutions to programming problems that could only be solved in one or two ways or elements dictated by external factors, such as the functional requirements and programming in the HP 3000 computer itself.
Accordingly, the appeal court in Delrina has retracted slightly from the trial court's embrace of the Altai test, by confirming that non-literal aspects will have to meet the level of originality accepted under Canadian/U.K. law of skill, judgement and labour.
CHARACTERS
The scope of copyright in a literary work also extends to three-dimensional depictions of characters described in that literary work, provided the descriptions are sufficiently distinct, thorough and complete. The leading case in this area is the recent decision in Anne of Green Gables Licensing Authority Inc. et al. v. Avonlea Traditions Inc. This case involved a contractual dispute between the heirs of Lucy Maud Montgomery, author of the novel "Anne of Green Gables", featuring the character of Anne Shirley, and Avonlea Traditions, which had entered into an agreement with the heirs for an exclusive right to produce certain merchandise, such as dolls, in the image of Anne.
The heirs had terminated Avonlea Traditions' licensing agreement for failure to pay the required royalties, but Avonlea continued to manufacture and sell the dolls. It had a number of defences arising from extenuating circumstances surrounding the rights in the "Anne of Green Gables" property. One defence was that copyright in the literary work did not extend to three-dimensional depictions of a character described in that literary text. The court rejected this defence, stating that the Anne character was sufficiently expressed in a distinctive way that a doll based on that description reproduced a substantial part of the literary work. The court distinguished this situation from the ruling in the Cuisenaire case in which it was held that the three-dimensional rods described in the book were not reproductions of the book's text, since they were instruments to implement a certain method, and, therefore, lacked originality.
The case of Paramount Pictures Corp. v. Howley et al., was also supportive in which the Ontario court had held that copyright in two-dimensional images of that character in the movie "Crocodile Dundee" extended to three-dimensional images based on the movie.
The court further held at page 320 of the decision:
"…there cannot generally be copyright in a mere name. However, where the name identifies a well-known character, copyright in both the name and the character may be recognized. A requirement for copyright of characters in a literary work is that the description in the work be sufficiently clearly delineated that such character subsequently becomes well-known and widely recognized".
With that test in mind, the court then reproduced several passages from the "Anne of Green Gables" novel, which described both the physical and character traits of Anne Shirley in significant detail and concluded:
" It is clear from the above quoted passages from L.M. Montgomery's "Anne of Green Gables" that the character "Anne" and the situations in which she finds herself in the book are clearly delineated, distinctive, thorough and complete. The defendant has reproduced or translated these descriptions in her two and three-dimensional representations of Anne and various other characters and situations from the text of the book. The literary work "Anne of Green of Gables" contains a detailed verbal portrait that captures Anne's physical image and her personal qualities, a portrait which I conclude is protected by copyright".
Even prior to the Anne of Green Gables case, the Québec Court of Appeal in Productions Avanti Cine Video Inc. v. Favreau, held that certain characters in the plaintiff's television show entitled La Petite Vie possessed copyright, which had been infringed by the defendant, who used similar characters in a pornographic film. The plaintiff's television show was a highly popular show situation comedy about a mother, clearly played by a man, dressed in a flower decorated robe and a father who sported a false long white beard. The copyright in these characters, unlike in the Anne of Green of Gables case, arose both from literary descriptions in the television scripts and certain visual or artistic works (i.e. costume renderings and character drawings for the actors).
The court found that the television show, classified as a dramatic work, and was a "funny, original and unique show of its kind in Québec. It introduces characters, which at least as far as the two principle characters are concerned, have no counterpart in the day to day. They move within a characteristic décor, which revolves around and reflects the absurdity of the text itself"
In conclusion, the court held at page 145:
"Therefore, with all due respect for his opinion, I cannot agree with the judge of the Superior Court when he states, that the characters "do not present characteristics sufficiently original that they could, standing alone without script or direction, be said to be subject to copyright protection".
In fact, I am of the view that Meunier's work forms an original, coherent and integrated whole. The mise en scène is essential for the text as is the case for the decors and the characters. Each depends upon the other. Each of the parties is a creation in itself and the fruit of the imagination of the author. No similarity is possible between the characters sketched out in a manner of speaking in La Petite Vie and those of any other dramatic work. "Pôpa" is more than the father of two girls and two boys but the archetype of the suburbanite in a different manner, depending upon his reading of the work. He s a unique fictional character in the same manner as Obelix, played on the screen by Gerard Depardieu, except that in the latter case, the comic strip preceded the performance by an actor.
I am of the view that the characters, themselves, are a creation and a substantial part of the work, subject to copyright held by Avanti, which is not disputed. Any unauthorized use, thereof, is consequently illegal under the Act
DRAMATIC WORKS
Dramatic works are defined in Section 2 of the Act as follows:
Dramatic work includes:
(a) Any piece for recitation, choreographic work or mime, the scenic arrangement or acting form which is fixed in writing or otherwise;
(b) Any cinematographic work; and,
(c) Any compilation of dramatic works
Again, through use of the word "includes", the category is not a closed one and the enumerated works are merely illustrative of the types of works that should fall within this category. Accordingly, as new works are developed, for example, webcasts, they will be protected under this category, without the need for legislative amendment.
A general definition of the category is found in Robic Leger's in annotated copyright act", at pages 2-204.36 and 2-204.37, respectively:
"A dramatic work involves either spoken words, or acting out, or a visualized sequence of events which distinguish it from a literary work, although a dramatic work may also be protected as a literary work".
"In its traditional sense, a drama is defined as a composition in verse or prose intended to portray life or character or to tell a story usually involving conflicts and emotions through action and dialogue and typically designed for theatrical performance (Webster's New Collegiate Dictionary) such as tragedies, comedies, operas, plays or farces".
Sterling in his textbook "Copyright Law and the United Kingdom" states that:
"In accord with Scutton A.J., in dicta in Vane v. Famous Players Film Co… it may be said that a dramatic work, such as a play, consists of the title, the dramatis personae, the text of the play, the recorded stage directions plus the dramatic incidents or action of the play resulting from the following of the text and directions of the dramatis".
However, it should be noted that although plays are one form of dramatic work, the work need not contain a high level of "drama", in the traditional sense, to be protected. For example, sales training programs captured on videocassettes qualified as dramatic works in Tom Hopkins International Inc. v. Wall and Redekop Realty Limited.
In general, this category includes radio sketches, videotapes, television programs and feature films, as well as film clips, websites that have some element of narrated text or a dramatic film clip, and webcasts.
Given the nature of a dramatic work, it can also include other copyrighted works that underlay the dramatic work and have a separate form of protection, for example, musical pieces incorporated into film and artwork pieces that may have been captured in the film while the dramatic story is being played out.
As with other works, the idea/expression dichotomy is applicable to dramatic works and mere ideas for a dramatic piece will not be protected:
It is on the basis of this principle that formats for dramatic works, such as television shows, have met with very weak protection under Canadian laws is copyrightable works. For example, in the case of Hutton v. Canadian Broadcasting Corp., the Alberta Court of Queen's Bench found that the format for a rock video show was not sufficiently expressed that it would be protected against the development by another of a competing rock video show, which had only a rough similarity in its format.
CHOREOGRAPHY
In respect of choreographic works, amendments to the Copyright Act 1988 state it includes any work of choreography, whether or not it has any storyline. Accordingly, modern dance, provided the piece is fixed in dance steps, which does not tell a story, as in a traditional ballet, such as Swan Lake, is now specifically protected as dramatic works.
In respect of cinematographic works, copyright will extend to films or "any work produced by any process analogues to cinematography". Accordingly, the definition will cover future technologies as long as there is some logical link to cinematography. It is more questionable whether a story captured by a technology quite different from cinematography will be protected under the category of a cinematographic work or under broader definition of just a dramatic work.
Also, it should be noted that amendments to the Act were implemented in 1993, by which any cinematographic work qualified as a dramatic work, whether it had an underlying acting form or combination of incidents or was merely a series of assembled images. Prior to these changes, series of moving images, which had no storyline had to be protected as a series of photographs.
FIXATION
The fixation requirement for dramatic works is also referred to in the definition, in subsection (a) which speaks about pieces for recitation, choreography and mime where the fixation must be "in writing or otherwise". Use of the words "or otherwise" indicates that traditional print notation is not required. This again indicates that the Act is media neutral and newer technologies, such as filming a piece of choreography in rehearsal and using it to train dancers rather than traditional paper notation, should be sufficient to meet the fixation requirement.
IMPROVISATION
Finally, purely improvised works, which are not fixed in any manner prior to their performance, will still not qualify as dramatic works under the Act. For example, in the case of FWS Joint Sports Claimants v. Copyright Board, the Federal Court of Appeal found there was no copyright in a sports game as a choreographed work, despite evidence that each team developed specific moves in a game plan on paper prior to playing the game, whereby individual teammates were instructed to make certain moves on the ice to try and achieve goals.
Because of the unpredictability, when both teams met on the ice, the court felt there was no sufficiently fixed choreographic work:
"The third issue argued by FWS was whether there is a copyright in the playing of a sports game. The court decided there was no such copyright, although there was in the television production of a game. It also held that there was copyright in the coach's written playbooks and game plans, as well as the teams crests and uniform designs. But these were not used by the cable operators. As for the playing of the game itself, even though it is played as much as possible in accordance with those plans, the Board found that this was not copyrightable, since it was not a "choreographic work", because, unlike a dance, a sporting event is for the most part a random series of events. The unpredictability of the action is inconsistent with the concept of choreography".
"I agree with the Board. Even though sports team may seek to follow the plays as planned by their coaches, as actors follow a script, the other teams are dedicated to preventing that from occurring and often succeed. As well, the opposing team tries to follow its own game plan, which, in turn, the other team tries to thwart. In the end, what transpires on the field is usually not what is planned, but something that is totally unpredictable. That is one of the reasons why sports games are so appealing to their spectators. No one can forecast what will happen. This is not the same as a ballet, where, barring an unforeseen accident, what is performed is exactly what is planned. No one bets on the outcome of a performance of Swan Lake. Ballet, is, therefore, copyrightable, but team sport events, despite the high degree of planning now involved in them are not".
However, Canadian law does accept some level of improvisation in a dramatic work, provided the overall structure is sufficiently fixed and repeatable so that the improvisation is not predominant. In the case of Kantel v. Grant, the Exchequer Court found a radio sketch developed by the plaintiff, to be sufficiently expressed as a dramatic work, although the dialogue used by Mr. Kantel in the sketch performed on daily radio varied somewhat from day to day, although a similar format was followed:
"Copyright subsists "in every original literary, dramatic, musical and artistic work," and, I think, the sketch in question must be held to constitute a dramatic work within the meaning of copyright law, and was, I think, fixed in writing sufficiently to say it was a dramatic composition capable of being published or performed and in which the dramatic element was present. The original manuscript, and even Exhibit A, grouped a series of predetermined incidents, songs, dialogues, and, for want of a better name, what I would call talks, in a fixed sequence, which gave to the sketch in its entirety the elements and characteristics of a dramatic composition. Had the performance of the sketch, as in the case of Uncle Don's performance in a shop in Philadelphia, been on the stage, the dramatic element would be more clearly realized than when communicated by radio…The Courts appear to be extremely liberal in their construction of what constitutes copyright, and also as to what constitutes a dramatic work. The sketch may have contained some ideas that were not quite original with Kantel, it may have embodied some ideas of Auld and Pogue, but the complete sketch is, I think, original in the sense that it gave expression to ideas in language and form which no one else, so far as I know, had done before. The fact that the original manuscript was departed from daily is not, I think, fatal to the plaintiff. In the presentation of a dramatic work, in whatever form, it is open to the performer to depart from the literal text of the work. Whatever the merits of the sketch, and it is not claimed to be of a high dramatic or literary order, it interested a section of the juvenile public for some months, and the work involved some labour, talent and judgment. From a perusal of decided cases wherein copyright in works has been upheld, I am led to the conclusion that there is enough of original literary and dramatic work in the sketch to support the plaintiff's claim to copyright, though, I must confess, I was inclined in the other direction during the progress of the trial".
ARTISTIC WORKS
Section 2 of the Copyright Act contains the following definition:
"Artistic Work" includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works and compilations of artistic works".
Accordingly, this definition is also merely illustrative of the types of works to be included within the category and is not an exhaustive list.
The caselaw has determined, however, that with the exception of works of artistic craftsmanship, which are discussed briefly below, and to some extent photographs, an artistic work is not required to have a high level of aesthetic merit and, as can be seen, mundane and practical works, such as maps, charts, labels, and trade marks which have a design element are protected as artistic works.
Earlier caselaw, such as Cuisenaire v. Southwest Imports Limited, a case in which wooden rods of varying colours and length were found not to qualify as artistic works, seemed to import a need for artistic merit, or at least aesthetic appeal, into the category. In Cuisenaire, the court indicated at page 514:
"An artistic work, in my view, must to some degree at least, be a work that is intended to have an appeal to the aesthetic senses, not just an incidental appeal, such as here, but as an important or one of the important objects for which the work is brought into being."
However, later caselaw, such as DRG Inc. v. Datafile, refuted this view. In Datafile, Madam Justice Reed stated on the issue of artistic merit:
"Even if works of craftsmanship and architecture must be measured against some test of "artistic"-ness… I do not accept that the category of artistic works in general must meet such a test. I do not accept that the work "artistic" in reference to "artistic work" is being used in the same sense as the word "artistic" in reference to works of artistic craftsmanship, that is in the latter case artistic ness requires a determination along the lines of that attempted in Henscher, Merlot or Hay. In my view, the phrase "artistic work" is used merely as a generic description of the type of works which follow. It is used as a general description of works which find expression in a visual media as opposed to works of literary, musical, or dramatic expression". (emphasis added)
That being said, however, some works of practical application may fail to meet even this fairly low level of originality, on the basis of the idea/expression dichotomy. For example, in the above-noted Cuisenaire case, the rods, which were of varying colours which appealed to children, were found not to be artistic works but mere tools to teach the underlying concept regarding principles of arithmetic. The court opined at page 513-514 of the decision:
"In my view, plaintiff's rods are physically little more than little tools or counters to be used for a particular purpose. Although, they are coloured in a manner such as
