Date: 20090625
Docket: T-64-08
Citation: 2009
FC 666
Ottawa, Ontario, June 25, 2009
PRESENT: The Honourable Madam Justice Simpson
BETWEEN:
HENRY NEUGEBAUER
Applicant
and
ANNA M. LABIENIEC
Respondent
REASONS FOR ORDER AND ORDER
[1]
This case
involves an application to expunge a Certificate of Registration of Copyright
(Registration No. 1,039,825) registered at the Canadian Intellectual Property
Office on July 12, 2006, in connection with a literary work in the Polish
language entitled Gesi puch (the Book). The Registration at issue
identifies both the Applicant and the Respondent as the owners and authors of
the Book. The application is brought pursuant to subsection 57(4) of the Copyright
Act, R.S.C. 1985, c. C-42 (the Act).
THE PARTIES
[2]
The Applicant,
Henry Neugebauer, was born in Poland in 1926 and has lived in Canada since the 1950s. He is a
Holocaust survivor and was 13 years old when the Germans occupied Poland in 1939. The Book is based on
his life story, particularly his experiences during the Holocaust. The
Applicant has no writing experience and is not familiar with matters such as
computer layouts, cover design and the process of printing and publishing a
book. The Applicant says that he is fluent in English and Polish.
[3]
The
Respondent, Anna M. Labieniec, is a writer and journalist who has lived and
worked in Canada for twelve years. She speaks
and works in Polish and is fluent only in that language. Accordingly, the
Respondent was assisted by a translator at the hearing of this application. In
addition to her claim to have jointly authored the Book, the Respondent has
written and published six books, four as general editor, one as a joint author,
and one as an author. She also claims to have authored several hundred
interviews as well as reports in print and for radio and television.
[4]
The
Respondent was briefly represented during a motion to adjourn these
proceedings, but was self-represented during the hearing on the merits.
Unfortunately, as a result of her decision to represent herself, her record was
not complete. For example, although in her affidavit of December 23, 2008
she described thirty pages of transcription which she alleged she prepared, she
was not permitted to introduce them during the hearing because they had not been
exhibited to her affidavit. As well, I have disregarded evidence she provided
during her submissions which was not included in her affidavits.
THE FACTS
[5]
The
Applicant says that a document entitled “Confirmation of Oral Agreement” dated
September 1, 2005 (the First Agreement) reflected the intention of the
parties to create a book with the Applicant as the author and the Respondent as
the editor. The Applicant further submits that the parties are bound by the
terms respecting “authorship” in the First Agreement because the Respondent
failed to demonstrate a modification of that agreement or a material change in
the parties’ intentions.
[6]
The
Respondent denies that the First Agreement related to a Book. She says that it
provided that she would prepare an edited transcription of the Applicant’s
tape-recorded recollections of his Holocaust experiences. The recordings were
in Polish and the transcription was also to be in that language.
[7]
The
Respondent says that a separate oral contract was made dealing with the writing
of the Book as joint authors (the Second Agreement) and that the Applicant’s
conduct supports their joint authorship of the Book.
[8]
For the
reasons below, I have concluded that the Respondent is credible and that there
was a Second Agreement under which she and the Applicant agreed to jointly
author the Book.
The First Agreement
[9]
The
parties did not know one another prior to their discussions about the First
Agreement. Based on a favourable recommendation, the Applicant contacted the
Respondent in August 2005.
[10]
On
September 1, 2005, the parties signed the First Agreement. It was a one
page personal service contract which had been drafted in English by the
Respondent’s husband, J. Bogdan Pasziewicz. Mr. Pasziewicz
explained the terms of the First Agreement to the parties in Polish before they
signed it. It identifies the Applicant as author and the Respondent as editor.
Her duties were to “[t]ransfer from tape recording to written media (Polish)”
and “[e]dit and shape the materials to literary form”.
[11]
The First
Agreement makes no mention of a book, but rather refers to the work as an
“edition” or “memoires”. The word “Memoires” appears over the Applicant’s name
on the top left corner of the page and again under the heading “miscellaneous”
as follows: “Author gives the rigts [sic] to the editor to use parts of
memoires in her future works”. The word “edition” appears twice under the
heading “miscellaneous” as follows: “Edition shall remain the property of the
Author” and “Author shall have final approval over edition”.
[12]
Mr.
Pasziewicz’s affidavit said that he explained to the parties that “[t]he
material is called Memoirs” and that:
The result of transferring the recordings
onto paper, the printed version of it (edition) belongs to the author of the
tapes. Such author has the right to ask for a correction of the printed version
in cases when he would not like to reveal some secrets from his life in print.
He gives Anna Labieniec the right to use parts of his history in her
journalistic work, without separate permission. The last clause was the main
concern for Mr. Neugebauer.
[13]
The
Respondent asserts that the content of the tape recordings was “a chaotic
accumulation of non-sequitur information about the Applicant’s life” with no
chronology. She also said that the language was difficult to understand. Given
her difficulty with the materials provided, the Respondent requested interviews
with the Applicant in order to complete her transcription of the Applicant’s
tapes. She also undertook some independent research to fill in gaps in the
material. In the end, she provided the Applicant with thirty pages of material.
[14]
I have
concluded that the First Agreement was a limited contract for the transcription
and editing and shaping of the material on the Applicant’s tapes into an
organized written form in Polish. Because the First Agreement provides for a
fee of only $2,000.00, two months for the completion of the work, and makes no
provision regarding copyright or royalties, I have accepted the Respondent’s
evidence that it did not deal with a book.
The Second Agreement
[15]
The
Respondent asserts that the Applicant was satisfied with the thirty page
transcription under the First Agreement but stated that he also dreamt of
writing a book. The Respondent says that the Applicant wanted her to write a
book of approximately 240 pages based on his life. He was to be the main
character. At this point, the parties orally made the Second Agreement
providing that they would be joint authors of the Book. The Second Agreement
also provided that the Applicant would pay for the first printed edition and
thus receive the whole income from that edition, but that profits from future
editions and any translations would be divided between the parties.
The Book
[16]
The Book
was first published in Toronto on May 5, 2006. It is
224 pages in length and has a paper jacket. The front of the jacket prominently
displays the names of both parties, with the Applicant’s name above and in
slightly larger type than the Respondent’s. The publishing information on the
second page of the Book shows copyrights for both individuals. The inside front
flap of the jacket includes the Applicant’s photo and provides information
about his background. It also notes that “[h]e told his story to [the
Respondent], Polish author and journalist who live in Canada”. The Respondent translated the first
sentence on the back of the jacket as follows:
“Gesi puch” (“Goos Down”) [sic] of
Henry Neugebauer and Anna Labieniec is a story based on true events, seen
through the eyes of teenager, history of the Holocaust in Sosnowiec.
[17]
The
Applicant acknowledges that the Respondent wrote every word in the Book. I have
accepted the Respondent’s submission that she took the Applicant’s disjointed
information and created a narrative. I have rejected the Applicant’s submission
that the Respondent merely edited and organized his narrative. I have also
concluded that the Respondent included original material in the Book about
events which were not actually based on the Applicant’s recollections. She created
this material to expand his story to make the Book.
[18]
The
Applicant says that, at the time the Book was printed by a printer arranged by
the Respondent, he was unaware that any reference was being made to the
Respondent as either an author or copyright owner. The Applicant states that
before the printing he was shown some items on Mr. Paszkiewicz’s computer,
but that he could not see anything as he was not wearing his glasses. He also
states that he was not given paper material to review, despite having asked for
it. He asserts: that everything was rushed and unorganized at the printing
house; that he was only given a few pages to look at; that he was not given
sufficient time to review the cover of the book; and that no one pointed out to
him “the small passages about copyright, rights being attributed to the Sooni
Project and other such details that are in the printed version of Gesi Puch”.
[19]
The
Applicant also says that when he saw the layout of the Book, he thought he was
sufficiently represented as the author by such things as his name being larger
on the cover, his forward introducing the Book, his picture and biography on
the front flap of the jacket cover, and “the fact that Gesi Puch is the
autobiography of [his] life”.
[20]
On the
other hand, the Respondent says that the Applicant liked the design of the Book
and approved of her name on the cover as joint author. Further, although she
didn’t agree, he wanted her to have her photograph on the back flap of the
cover. The Respondent and Marek Kornas, the owner and operator of Nova
Printing, both deposed that the Applicant participated in all decisions and
approved all consecutive stages of the work throughout the printing process
which took three weeks. They say that, during that period, the Applicant took
the jacket and the text of the work home and never objected to any aspect of
the material. They also say in late April 2006, the Applicant attended at the
printing shop and carefully examined the Book and the cover and approved the
content of both.
[21]
Based on
the above submissions, I have rejected the Applicant’s claims that he was
unaware of the copyright and authorship information in the Book before it was
printed.
Publication of the Book
[22]
The
Applicant submits that the conduct of the parties after a work is published
should not be treated as evidence of their intentions. However, in Drapeau
c. Girard, [2003] R.J.Q. 2539 at para. 9, the Quebec Court of Appeal held
that parties post-publication behaviour was relevant to issues of authorship
and joint authorship. Accordingly, I will examine that behaviour.
[23]
The first
promotional event for the Book took place in Toronto on May 5, 2006 at the Artus
bookstore. According to Teresa Budzillo, the owner and manager of Artus, the
event was planned in a meeting involving herself, the Applicant and the
Respondent, wherein the Applicant “introduced himself as a co-author of the
book Gesi puch written by Anna Labieniec”. Ms. Budzillo and the
Respondent said that the public reading on May 5, 2006 was attended by
writers and journalists as well as readers and the Applicant’s close family
members.
[24]
Ms.
Budzillo described the event, in part, as follows:
Anna Labieniec talked about the process
of writing the book, and about the difficulties which she had to overcome in
order to convey in words the way of thinking of the man raised in different
from Christian culture, and express the character’s traumatic experience in the
face of extermination. […]During the reading, Mr. Neugebauer repeatedly
thanked Anna Labieniec for writing a beautiful book about him and his lot. He
presented her with a bouquet of roses. Ms. Labieniec and Mr. Neugebauer
jointly signed the books for the readers.
[25]
Marek
Kusiba, a writer and journalist who attended the event, said that the parties
were both asked for autographs by several purchasers. However, the Applicant
asserts that the parties signed the Book not as joint authors, but as author
and editor and says that they co-signed at the Toronto book launch only because the Respondent
had many friends in attendance. However, because they also signed the Book
together in Poland, I have not accepted this
explanation.
[26]
The
Applicant gave the Respondent an autographed copy of the Book. The Respondent
translated the autograph from Polish into English as follows: “For Ms. Ania for
writing beautiful book with thanks. Henry Neugebauer.” The Applicant does not
contest the translation, rather he asserts that he meant to express his
gratitude for her editorial assistance. The Applicant’s counsel said that the
Applicant meant to thank the Respondent for editing the Book, and that the
Court should not put too much weight on his choice of words. However, I have
taken his words at face value and am comfortable that, if she had been an
editor, his note of thanks would have reflected that fact. In reaching this
conclusion, I am mindful that the Applicant was aware of the distinction
between an author and an editor when he signed the First Agreement.
[27]
I have
found the evidence about the promotional reading at Studio 102 in Lodz, Poland on May 26, 2006 to be
particularly useful. The Respondent provides a translation of the portion of
the reading that was videotaped and the Applicant does not contest the
Respondent’s translation. The Respondent clearly described herself as an author
of the Book without objection from the Applicant.
[28]
Based on
all the evidence, including photographs of the Respondent autographing the Book
with the Applicant in Toronto and Poland, I have determined that the parties
signed together on at least two occasions. In light of this conduct at the
promotional events and particularly Ms. Budzillo’s evidence that he
identified himself as “co-author” with the Respondent, I also reject the
Applicant’s submission that these signings were not as co-authors. Accordingly,
I find that the parties held themselves out as joint authors during the
promotion of the Book.
Events Leading up to This
Proceeding
[29]
The
Applicant testified that on his return from Europe, his daughter (now deceased)
alerted him to her belief that the Respondent was claiming joint authorship in
the Book. He was apparently surprised and enraged and took corrective action,
including publishing a newspaper advertisement identifying himself as the
Book’s sole author.
[30]
Ms. Budzillo
says that in late June 2006, she discovered that the Applicant had replaced the
promotional posters in her store which bore the names of both parties with ones
that bore only his name. She took them down and requested a meeting with the
Applicant. She also says that the Respondent informed her that the Applicant’s
lawyer had written to her accusing her of unlawfully presenting herself as
co-author of the Book and threatening litigation. Ms. Budzillo says that,
in their meeting, the Applicant gave her no reason for his conduct. She
informed him that she considered his behaviour scandalous and ungrateful and
she refused to sell the Book. She returned the unsold copies to the Applicant.
[31]
The
Respondent says that the Applicant’s story about discovering her claim to joint
authorship from his daughter is untrue. She says that his conduct is explained
by the fact that she had the contacts needed to arrange the promotional tour in
Poland and, once it was over, the
Applicant had no further need of her. She also says he was motivated to deny
her joint authorship by the prospect that he would have to pay her if the Book
was republished or translated.
[32]
The
Respondent registered the Book with the Canadian Intellectual Property Office
on July 12, 2006. The registration identified the Respondent and the
Applicant as owners and authors of the Book.
[33]
In October
2007, the Applicant submitted an independent Application for Registration of
Copyright in the Book to the Canadian Intellectual Property Office, which was
registered on November 2, 2007. This registration identifies the Applicant
as the sole owner and author of the Book.
ISSUES
[34]
Against
this background, the following questions require consideration:
1.
Did the
Respondent’s contribution to the Book constitute “authorship” under the Act?
2.
Did the parties’
respective contributions to the Book constitute “joint authorship”?
Issue 1 - Authorship
[35]
The
parties disagree about the Respondent’s creative contribution to the Book.
While the Applicant asserts that the Respondent did not contribute to the creative
or intellectual process of writing the Book, characterizing her contribution as
merely editorial, the Respondent asserts that the intellectual and creative
process of writing the Book was all her own.
[36]
The
Applicant correctly notes that although the word “author” is not defined in the
Act, cases have indicated that it conveys a sense of creativity and ingenuity.
The Applicant further cites the New Brunswick Court of Appeal’s decision in New
Brunswick Telephone Company in this regard. It states:
The word author must “not be equated to a
mere scribe or amanuensis.” Nor can a person who shared or gives to another
person be considered an author. Rather, it is the individual who “expressed the
ideas in an original or novel form” that is considered the author.
New Brunswick Telephone Company, Limited
v. John Maryon International Limited [1982] N.B.J. No. 387, [1982] 141 D.L.R.
(3d) 193 at 244 (N.B.C.A.).
[37]
I have
concluded that, in this case, the Respondent contributed sufficient originality
and expression to claim authorship of the Book and have rejected the
Applicant’s submission that the Book is simply the Respondent’s transcription
of the Applicant’s narrative with minor improvements to flow, editing of
vocabulary and crafting. In my view, the Applicant did not provide the
Respondent with sufficient personal recollections to allow her to write a book.
This is why her affidavit describes over a dozen scenes based on her
imagination and research in order to fill out the Book. The Respondent takes
issue with only one of her claims and says he told her about drinking whale
oil.
[38]
Canadian
cases have consistently maintained that copyright law does not protect ideas,
concepts and facts, but rather the expression of these ideas, concepts and
facts in an original form. The Applicant maintains that all the Respondent’s
created events are “loosely base on my life and or [sic] the lives of
those like me who endured the Holocaust”. I find this to be an admission that
these events were not simply the Respondent’s edited transcription of a
narrative authored by the Applicant.
[39]
In Gould
Estate v. Stoddart Publishing Co. (1996), 30 O.R. (3d) 520 (Gen. Div.), aff’d (1998), 80
C.P.R. (3d) 161 (Ont. C.A.). Glenn Gould, who was the subject of the
literary work, contributed substantially to the content of the work in the form
of statements given in interviews. However, the author was held to be the
person who conducted interviews and performed the creative task of assembling
his statements into a literary work. Accordingly, Gould states that
people do not have copyright in a work simply because they are its subjects or
respond to questions in interviews. Following Gould, Hager v. ECW
Press Ltd., [1999] 2 F.C. 287, 85 C.P.R. (3d) 289, at para. 24, noted that:
Under
Anglo-Canadian law, insofar as private interviews are concerned, it is the
person who reduces the oral statements to a fixed form that acquires copyright
therein. That individual is considered to be the originator of the work.
Issue 2: Joint Authorship
[40]
The Applicant also contests
the Respondent’s factual and legal entitlement to joint authorship.
[41]
Section 2 of the Act
defines “work of joint authorship” as follows:
|
"work of joint authorship"
«oeuvre créée en collaboration »
"work
of joint authorship" means a work produced by the collaboration of two
or more authors in which the contribution of one author is not distinct from
the contribution of the other author or authors;
|
«oeuvre créée en collaboration »
"work of joint authorship"
«oeuvre créée en collaboration » Oeuvre exécutée par la collaboration de
deux ou plusieurs auteurs, et dans laquelle la part créée par l’un n’est pas
distincte de celle créée par l’autre ou les autres.
|
[42]
Thus, the statutory
definition involves two precise requirements: there must be collaboration and
the contributions must not be distinct.
[43]
I have concluded
that, under the Second Agreement, there was collaboration which contributed
towards a unitary whole and that the parties intended that their contributions
be joined in furtherance of a common design. I have accepted the Respondent’s
evidence that the Applicant agreed that they would be joint authors of the
Book. I am persuaded that the Respondent is a joint author by the evidence of
the bookstore owner who asserted that the Applicant introduced himself to her
as the “co-author” of the Book written by the Respondent and by the Applicant’s
post-publication conduct.
[44]
I have reached this
conclusion under both the conventional test for joint authorship as well as the
expanded test introduced by the British Columbia Supreme Court its decision Neudorf
v. Nettwerk Productions Ltd. (1999), 3 C.P.R. (4th) 129
(B.C.S.C.) at para. 24 (Neudorf). Neudorf followed American law,
which imposes a requirement that collaborators intend to regard each other as
joint authors, instead of the Canadian and British precedents, which impose no
such requirement.
[45]
Levy v. Rutley (1871) 6 L.R. 976 (CP) 1870-71 523 [Levy
v. Rutley] continues to be cited as the leading authority on the
constituent elements of joint authorship under English and Canadian law. For
example, Normand Tamaro, The 2009 Annotated Copyright Act (Toronto: Carswell, 2008), at pp. 189-191, cites this judgment as
establishing the following three important elements concerning work of joint
authorship:
First,
the existence of a work of joint authorship is established by the facts and by
the law, and is not based on the parties’ intentions.
[…]
Second,
the contributions of each of the parties need not be equal, though each must be
substantial.
[…]
Third,
even if one contribution may be qualitatively and quantitatively inferior to
the other, there must be a joint labour in carrying out a common design.
[my emphasis]
[46]
In contrast to the
joint authorship element of “contribution”, which has been considered in numerous
Canadian cases, Mr. Justice Cohen said in Neudorf at para. 68 that
“[t]here is a dearth of Canadian law on the meaning of the word “collaboration”
in the definition of joint authorship in s. 2 of the Act.”
[47]
After describing some
of the Canadian and English authorities, Mr. Justice Cohen concluded
at para. 71 that:
Neither
Fox, Stuart v. Barrett nor Godfrey v. Lees expanded upon the test for joint
authorship beyond the scope of its introduction into the common law by Levy v.
Rutley. However, in my opinion, the authorities, at the very least, have
settled that to satisfy the test for joint authorship a putative joint author
must establish that he has made a contribution of significant original
expression to the work at the time of its creation, and that he has done so
pursuant to a common design (or, in other words, some form of shared intent).
[my emphasis]
[48]
In
introducing the requirement for shared intention, Justice Cohen drew on
American legislation and precedents.
[49]
Section
101 of the U.S. Copyrights Act of
1976, 17 U.S.C., the legislative definition of a “joint work” in force in the U.S. at the time Neudorf was decided,
provided as follows:
A “joint work” is a work prepared by two
or more authors with the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole.
[50]
Justice
Cohen also relied on Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991) (Childress),
which he treated as the leading American authority interpreting the American
statutory definition of “joint work”. It established the following three-prong
test:
1)
each of
the collaborators intended the other to be a joint author of the work;
2)
each
author’s work was independently copyrightable; and
3)
each
author intended that his work be merged into inseparable or interdependent
parts of the whole.
[51]
Although
the Neudorf test has been used at the trial level in Quebec, Ontario and
Nova Scotia (see Drapeau c. Carbone 14, [2000] J.Q. no 1171 (QCCS)
(Locus Para. 55); Saxon c. Communications Mont-Royal inc., [2000] J.Q.
no 5634 (QCCS) (Locus Para. 75); Dolmage v. Erskine (2003), 23 C.P.R. (4th)
495 (ONSupCtJus) (Locus Para. 45); and Wall v. Horn Abbot Ltd., 2007
NSSC 197 (Locus Paras. 498-506), it has not, in my view, been applied at
the appellate level. In particular, I have not accepted the Applicant’s
submission that it was relied on by the Quebec Court of Appeal in Drapeau
c. Girard, [2003] J.Q. no 13044, 127 A.C.W.S. (3d) 533. As I read
that decision, the Court relied
on the conventional test for joint authorship found in Levy v. Rutley.
[52]
Given this
background, I have decided not to follow Neudorf’s articulation of the
appropriate test for joint authorship under s. 2 of the Act. However, as
previously mentioned, even if I had followed Neudorf, my conclusion on
the issue of joint authorship would have been the same.
CONCLUSION
[53]
The
application to expunge the Registration of Copyright No. 1,039,825 will be
dismissed.
ORDER
UPON hearing the submission of both
counsel for the Applicant and the self-represented Respondent in Toronto on Thursday, January 22,
2009;
AND UPON being satisfied, for the
reasons given above, that the Certificate of Registration of Copyright
(Registration No. 1,039,825) dated July 12, 2006, properly describes both
parties as owners and authors of the literary work entitled Gesi puch;
AND UPON being satisfied that, because
the Respondent is a self-represented litigant, she is entitled to be reimbursed
as follows: (i) for her time on a modest scale; (ii) her reasonable
disbursements; and (iii) party and party costs associated with the work of any
counsel retained to assist with this application;
NOW THEREFORE THIS COURT
ORDERS that:
1.
This
application to expunge the Certificate of Registration of Copyright
(Registration No. 1,039,825) dated July 12, 2006, in connection with the
literary work entitled Gesi puch is dismissed.
2.
The
Respondent shall have her costs, in the amount of $3,000.00 for her time plus
reasonable disbursements and party and party costs associated with any counsel
retained to assist with this application.
“Sandra J. Simpson”
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