Docket: T-500-14
Citation:
2016 FC 524
Ottawa, Ontario, May 10, 2016
PRESENT: The
Honourable Mr. Justice Boswell
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BETWEEN:
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JUDY MALTZ,
BARBARA BIRD
AND RICHIE
SHERMAN
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Applicants
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and
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JENNIFER L.
WITTERICK
AND PENGUIN
CANADA BOOKS INC.
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Respondents
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JUDGMENT AND REASONS
[1]
Francizska Halamajowa and her daughter, Helena,
lived in the town of Sokal, Poland, during World War II when the town was
occupied by German forces. She harboured and hid three Jewish families for
nearly two years as well as a German soldier who had deserted as the war neared
an end. Mrs. Halamajowa’s story forms the basis of a documentary film, titled No.
4 Street of Our Lady, which the Applicants have produced and directed. This
documentary is based in part on the diary of Moshe Maltz, who was one of those
hidden by Mrs. Halamajowa and was also the grandfather of Judy Maltz, one of
the three Applicants in this proceeding.
[2]
The Applicants contend that Jennifer Witterick
and the publisher of her book, Penguin Canada Books Inc., have infringed their
copyright and moral rights in the documentary. They say Ms. Witterick’s novel,
titled My Mother’s Secret, impermissibly copied from their documentary
and, consequently, they are asking the Court, among other things, to award them
damages totalling $6,000,000 as against Ms. Witterick and Penguin Canada.
I.
Background
[3]
Ms. Maltz was teaching journalism at
Pennsylvania State University in May 2006 when she approached the other two
Applicants, Richie Sherman and Barbara Bird, about making a documentary
regarding a Polish-Catholic woman, Francizska Halamajowa, who had rescued
members of her family during the Holocaust. Her evidence shows that the
documentary [the Documentary] cost approximately $100,000 to make, took some
three years to produce, and premiered on March 1, 2009 in Pennsylvania. DVD
copies of the Documentary went on sale to the public in early September 2009.
The Documentary has been screened at dozens of film festivals and other venues,
won several awards, and generated approximately $25,000 in revenue.
[4]
Ms. Witterick first viewed the Documentary when
she attended a screening in November 2011, during Holocaust Education Week in
Toronto. She says Francizska Halamajowa’s story and her courageous acts
inspired her to write My Mother’s Secret [the Book]. She characterizes her
Book as a fictionalized version of Mrs. Halamajowa’s story. She says she
targeted the Book at young adults, and that she was influenced in the style of
the Book by novels such as The Hunger Games. She states she used the real names
of the Halamajowas and several facts from the Documentary; notably, the
location of the story, where Mrs. Halamajowa and her daughter hid people (i.e.,
a loft above a pigsty, under the kitchen floor, and in the attic of her house),
that Mrs. Halamajowa had left her husband, and that she had a son and a
daughter. According to Ms. Witterick, the characters and personalities in the
Book are fictional, drawn from her own experiences and imagination.
[5]
Ms. Witterick admits she used certain facts as
she recalled them from the Documentary and worked them into her Book. The Book
is comprised of five sections, each with a different narrator. The record
includes a more or less finished draft of the Book dated June 19, 2012. It also
includes evidence that sometime in July 2012 Ms. Witterick downloaded a copy of
the Documentary and watched certain sections of it to confirm the historical
accuracy of some facts in the Book, notably as to what rewards were being given
for turning in Jews in Sokal at the time. Ms. Witterick’s Book was first
published in March 2013 by iUniverse, a self-publishing company. The Globe and
Mail placed the Book on its bestsellers list for the first time on April 20,
2013.
[6]
Ms. Maltz says she first learned of Ms.
Witterick’s Book on April 2, 2013, when she received an email from a woman
named Sue Kaplan. On April 3, 2013, she contacted Ms. Witterick by email and,
following their exchange of emails over the next two days, Ms. Witterick sent
Ms. Maltz several copies of the Book. Ms. Maltz says she was distressed by the
situation and did not read the Book until sometime after she received the
copies.
[7]
Sometime in May or June 2013, GP Putnam’s Sons,
an imprint of the Penguin Group in the United States, acquired worldwide
publishing rights for the Book. On August 11, 2013, Ms. Maltz emailed Alex
Gigante, counsel for Penguin Group (USA) LLC, raising various concerns about
the Book. Mr. Gigante’s reply to Ms. Maltz on August 12, 2013, stated that
there was no copyright in facts and invited her to provide examples of
inappropriate copying from the Documentary. In September 2013, Penguin
published the Book in Canada and in the United States. Subsequently, the
Applicants’ legal counsel sent a cease and desist letter dated October 31,
2013, to Penguin Canada, Ms. Witterick, Penguin USA and iUniverse.
[8]
The parties agree there was an offer from Ms.
Witterick to Ms. Maltz to include “something”
from Ms. Maltz in the Book. Ms. Maltz characterizes this as Ms. Witterick
looking for an endorsement; Ms. Witterick characterizes this as offering Ms.
Maltz an opportunity to include her views in the Book, after Ms. Witterick
learnt that Ms. Maltz was upset by the Documentary not being mentioned in the
Book. In any event, there is no mention of the Documentary in the copies of the
Book placed in the record for this matter.
[9]
Ms. Maltz states that, as of March 27, 2014,
there has been no attribution to the Documentary in newer editions of the Book
or in any other publicity material authorized by Ms. Witterick and her
publishers. However, the record does contain an article from the Canadian
Jewish News dated April 2, 2013, in which the reporter who had interviewed Ms.
Witterick noted that she had found out about the story of Mrs. Halamajowa and
her daughter while watching the Documentary during Holocaust Education Week in
Toronto in 2011.
[10]
Ms. Maltz alleges that the Book copies personal
family stories as well as the structure and narrative devices of the
Documentary. Accordingly, on February 27, 2014, she and the other two
Applicants filed a Notice of Application pursuant to subsection 34(4) of the Copyright
Act, RSC 1985 c. C-42 [the Act], requesting, among other things, a
declaration that the Respondents have, contrary to the Act, infringed
the Applicants’ copyright and moral rights in the Documentary.
II.
Issues
[11]
The various issues raised by the parties boil
down to these three questions:
1.
Has there been substantial taking from the
Documentary by the Respondents such that there is copyright infringement?
2.
Have the Applicants’ moral rights been
infringed? and
3.
If there is copyright infringement or if the
Applicants’ moral rights have been infringed, are the Applicants entitled to
damages or any other remedy?
III.
The Experts’ Evidence
[12]
The Applicants and the Respondents each filed an
affidavit from an expert witness. The Respondents engaged Professor Sara
Horowitz, a Professor of Comparative Literature at York University with
specialties in the Holocaust and Jewish studies. Her affidavit focuses on the
use of various themes and elements in Holocaust literature; she deposes that
various elements in the Book, such as a massacre at a factory, aktionens or
raids in Jewish ghettoes, and hiding in attics and lofts, are common themes in
Holocaust literature.
[13]
For their part, the Applicants filed an
affidavit from Jack Granatstein, a former director and CEO of the Canadian War
Museum and an emeritus professor of History at York University. His affidavit
speaks to “large” versus “small” facts as well as plagiarism and plagiarism
policies at universities amongst academics. He draws a distinction between a “large” fact, such as “the
Second World War began when Germany invaded Poland,” and a “small” fact, such as a soldier’s diary entry that he
had “looted the post office at Danzig on September 4,
1939.” In his opinion, it was inappropriate for the Book not to credit
the Documentary.
IV.
The Parties’ Submissions
[14]
The Applicants assert that Ms. Maltz’s email
letter to Mr. Gigante was in effect a “red flag”
alert about the infringement, and that there is no other book or similar story
covering the numerous elements which the Applicants say are shared between the
Documentary and the Book. They also highlight the fact that Ms. Witterick has
not denied watching the Documentary. They suggest that Ms. Witterick copied
passages and small details from the Documentary as well as “various storytelling devices and choices used by the
filmmakers in their creative expression” of Mrs. Halamajowa’s story.
[15]
The Applicants point to what they allege are at
least 30 similarities between the Documentary and the Book. They acknowledge
that although well-known historical facts are open to use by anyone, the
30 examples in their chart listing “verbatim or
almost verbatim copying” are “small facts”
not documented anywhere but in the Documentary. They contend that these small
facts have been plagiarized in the Book and were elicited by the Applicants’
time, skill, and judgment. According to the Applicants, the Documentary relays
these small facts through the lens of a particular family, and that Ms.
Witterick uses this same mechanism in the Book. It makes no sense, the
Applicants say, that Ms. Witterick would look to the Documentary for historical
accuracy, yet also disregard historical accuracy about other matters such as her
use of non-Jewish names for Jewish characters in the Book. The Applicants
submit that Ms. Witterick used various storytelling devices from the
Documentary, including the framing question of why Mrs. Halamajowa took the
actions she did. Because the Book was at times on the Globe and Mail’s
bestsellers list for non-fiction, the Applicants say this undermines the claim
that the Book is a fictional story.
[16]
The Applicants rely upon Anne of Green Gables
Licensing Authority Inc. et al. v Avonlea Traditions Inc., [2000] OJ No
740, 4 CPR (4th) 289 [Anne of Green Gables], for the proposition that
there can be copyright in “well-delineated characters.”
They also submit, on the basis of Hager v ECW Press Ltd. et al., [1998]
FCJ No 1930, 85 CPR (3d) 289, that there can be copyright in interview
material. The Applicants further cite and rely on the Supreme Court of Canada’s
decision in Cinar Corporation v Robinson, 2013 SCC 73, [2013] 3 S.C.R. 1168
[Cinar], arguing that the cumulative features of a work must be
considered, and that substantial taking can include intelligible similarities
such as themes.
[17]
The Respondents acknowledge that the Documentary
is a dramatic work protected by copyright. However, according to the
Respondents, the only similarities between the Book and the Documentary are the
facts, and they do not relate to copyrighted expression. The protected
expression, the Respondents argue, is the Applicants’ skill and judgment used
to shoot, compile and arrange the Documentary. Mrs. Halamajowa and the other
persons involved in her story are factual, historical persons in respect of
whom the Applicants do not have a monopoly.
[18]
The Respondents say there is no copyright in
facts, regardless of whether they are small or large. The Respondents submit
there is no legal basis for the “small facts”
theory advanced by the Applicants on the basis of Professor Granatstein’s
affidavit. They submit that the Applicants’ plagiarism arguments do not apply
in copyright law because plagiarism protects ideas, while copyright protects
only the expression of ideas. According to the Respondents, only originality is
protected by copyright, and whether a substantial part of a work has been
copied is a determination that must be made “holistically
and qualitatively.”
[19]
The Respondents recognize that the Applicants
used their skill and judgment to put together and edit archival material, film
footage, music, and conduct interviews for the Documentary; these elements give
the Documentary a “distinct feel” involving
contemporary recollection and history. The Book, however, has a completely
different feel, the Respondents say, because it is a fictional story aimed at
young readers. The Respondents argue that the Applicants have failed to
consider the Book as a whole, including what makes the Book an original work.
[20]
The question at issue, the Respondents submit,
is whether a substantial part of the Applicants’ protected original expression
has been reproduced. The Respondents rely on the UK case of Baigent v The
Random House Group, 2007 EWCA Civ 247, for the proposition that when there
is a claim of infringement of factual material by a work of fiction, the facts,
ideas, and themes cannot be monopolized. According to the Respondents,
historical facts and interpretations do not count towards substantial
similarity (citing Effie Film LLC v Pomerance, 909 F.Supp.2d 273 (SDNY
2012) [Effie Film]).
[21]
The Respondents contend that the Applicants have
not shown that a substantial part of the Documentary has been reproduced.
Contrary to the Applicants’ allegations, there is no verbatim copying. The
Applicants, the Respondents argue, have failed to identify this alleged copying
and none of the items they point to is original expression. In this case, the
Respondents say the Applicants cannot argue similarities between the characters
in the Book and the “real life characters” in
the Documentary since these are or were real people whom the Applicants cannot
own. According to the Respondents, copyright can only exist in a fictional
character such as Anne of Green Gables.
[22]
As to the storytelling devices, the Respondents
submit that the framework of multiple narrators in the Book and in the
Documentary is similarity at such an abstract level so as to be meaningless.
Also, in beginning and ending with the question of whether others would have
taken actions similar to those of Mrs. Halamajowa, the Respondents rely upon
Professor Horowitz’s affidavit to show that this is a common theme to all
stories of Holocaust rescuers, not only in the Documentary.
V.
Analysis
A.
The scope of the Applicants’ copyright in the
Documentary
[23]
In assessing whether any infringement has
occurred in this case, it is first necessary to consider the scope of the
Applicants’ copyright in the Documentary because the Respondents cannot
infringe in ways which do not fall under copyright protection.
[24]
The Applicants have obtained a copyright
registration under the Act for a “dramatic”
work titled No. 4 Street of Our Lady, being registration number 1107763
dated September 18, 2013. Ms. Maltz alone holds a copyright registration for
her grandfather’s diary which was privately published in New York on December
22, 1993 under the title Years of Horror - Glimpse of Hope; this
registration was assigned to Ms. Maltz by her father in 2014 after it was
registered on September 23, 2013.
[25]
By virtue of subsection 3(1) of the Act,
the Applicants have the sole right to produce or reproduce the Documentary or
any substantial part thereof in any material form whatever, and to authorise
use of the Documentary in the manner and ways contemplated by such subsection.
[26]
The Respondents do not dispute that the
Applicants have copyright in the Documentary: both parties agree that,
fundamentally, there is copyright in originality and in the Applicants’
compilation and overall arrangement of the elements in the Documentary. In this
regard, the observations of Justice McLachlin (as she then was) in Slumber-Magic
Adjustable Bed Co. Ltd. v Sleep-King Adjustable Bed Co. Ltd. (1984), 3 CPR
(3d) 81, [1985] 1 WWR 112, warrant note:
17 … It is well established that compilations
of material produced by others may be protected by copyright, provided that the
arrangement of the elements taken from other sources is the product of the
plaintiff’s thought, selection and work. It is not the several components that
are the subject of the copyright, but the overall arrangement of them which the
plaintiff through his industry has produced. The basis of copyright is the
originality of the work in question. 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, judgment or labour that has been involved in
making the compilation: Ladbroke (Football), Ltd. v. William Hill (Football)
Ltd., [1964] 1 W.L.R. 273, [1964] 1 All E.R. 465 (H.L.). Where copyright is
claimed in a compilation it is not the correct approach to dissect the work in
fragments and, if the fragments are not entitled to copyright, then deduce that
the whole compilation is not so entitled; rather, the court should canvas the
degree of industry, skill or judgment which has gone into the overall
arrangement: Ladbroke, supra; see also T.J. Moore Co. v. Accessoires
de Bureau de Que. Inc. (1973), 14 C.P.R. (2d) 113 (Fed. Ct.); Jarrold v.
Houlston (1857), 3 K. & J. 708, 69 E.R. 1294 (Ch. Div.); MacMillan
& Co. v. Cooper (1923), L.R. 51 Ind. App. 109, 40 T.L.R. 186 (P.C.).
[27]
It should also be noted that the so-called “sweat of the brow doctrine” has been rejected as the
test for originality. A protected work must be an exercise of skill and
judgment. As the Supreme Court stated in CCH Canadian Ltd. v Law Society of
Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339 [CCH]:
24 Requiring that an original work be
the product of an exercise of skill and judgment is a workable yet fair
standard. The “sweat of the brow” approach to originality is too low a
standard. It shifts the balance of copyright protection too far in favour of
the owner’s rights, and fails to allow copyright to protect the public’s
interest in maximizing the production and dissemination of intellectual works.
On the other hand, the creativity standard of originality is too high. A
creativity standard implies that something must be novel or non-obvious —
concepts more properly associated with patent law than copyright law. By way
of contrast, a standard requiring the exercise of skill and judgment in the
production of a work avoids these difficulties and provides a workable and
appropriate standard for copyright protection that is consistent with the
policy objectives of the Copyright Act.
[28]
More recently, Chief Justice McLachlin, speaking
for the Supreme Court in Cinar, noted that:
[24] The Act protects original
literary, dramatic, musical, and artistic works: s. 5. It protects the
expression of ideas in these works, rather than ideas in and of themselves: CCH
Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R.
339, at para. 8. An original work is the expression of an idea through an
exercise of skill and judgment: CCH, at para. 16. Infringement consists
of the unauthorized taking of that originality.
[25] However, the Act does not protect
every “particle” of an original work, “any little piece the taking of which
cannot affect the value of [the] work as a whole”: Vaver, at p. 182. Section 3
of the Copyright Act provides that the copyright owner has the sole
right to reproduce “the work or any substantial part thereof”. [Emphasis
in original]
[29]
The Documentary as a whole is undoubtedly protected
by copyright. However, the Applicants must grapple with the overarching
principles noted above as well as the long standing principle that “there can be no copyright in facts” (see: CCH
Canadian Ltd. v Law Society of Upper Canada, 2002 FCA 187 at para 212,
[2002] 4 FC 213; also see: Deeks v Wells, [1931] 4 DLR 533, 1931
CarswellOnt 247 (CA), per Orde, J.A.).
[30]
Mrs. Halamajowa’s story is not in and of itself
covered by the Applicants’ copyright in the Documentary. The factual details of
her story are also not covered by the Applicants’ copyright. It is not the
story that the Applicants’ copyright protects but, rather, the Applicants’
specific expression of it through the exercise of their skill and judgment.
[31]
The Applicants’ arguments based on differences
between “small” and “large”
facts, with the former deserving of protection in this case and the latter not
so deserving, are without merit. Copyright law recognizes no such difference or
distinction. Facts are facts; and no one owns copyright in them no matter what
their relative size or significance. Any alleged distinction between small and
large facts is an artificial division, one which obscures what is protected by
the Applicants’ copyright in the Documentary. The particular means, method, and
manner the Applicants used to tell Mrs. Halamajowa’s story is protected. Their
particular phrasing of the words which tell her story is also protected, such
that instances of verbatim copying – i.e. transcription of the Documentary –
may well constitute copyright infringement.
[32]
However, using an actual fact from the
Documentary is not infringement no matter how large or small, significant or
insignificant, such a fact may be. There can be no copyright, for example, in
the fact that during the Second World War Mrs. Halamajowa afforded refuge to
three Jewish families and a German soldier, or that there was a massacre at the
brickyard in Sokal during the war. As noted above, there can be no copyright in
facts or ideas, but only in their expression through an exercise of skill and
judgment.
B.
Was there a substantial taking?
[33]
The central question to be addressed is whether
the originality of the Documentary, such as its structure, tone, theme,
atmosphere and dialogue, has been improperly copied by the Respondents and amounts
to a substantial taking from the Documentary.
[34]
Upon comparison of the essential elements of
originality in the Documentary with those of the Book and considering each of
the Documentary and the Book holistically and each as a whole, I find, for the
reasons that follow, that the Book does not amount to a substantial taking from
the Documentary.
[35]
The Supreme Court stated in Cinar that:
[26] A substantial part of a work is a
flexible notion. It is a matter of fact and degree. “Whether a part is
substantial must be decided by its quality rather than its quantity”: Ladbroke
(Football), Ltd. v. William Hill (Football), Ltd., [1964] 1 All E.R. 465
(H.L.), at p. 481, per Lord Pearce. What constitutes a substantial part is
determined in relation to the originality of the work that warrants the
protection of the Copyright Act. As a general proposition, a substantial
part of a work is a part of the work that represents a substantial portion of
the author’s skill and judgment expressed therein.
[36]
Since facts are not protected by copyright, they
are not part of a work’s originality. Consequently, any facts copied or taken
by Ms. Witterick and used in her Book should not form part of the assessment as
to whether a substantial part of the Documentary was taken by her (see: Effie
Film). Making this assessment requires a holistic approach, one which looks
to the cumulative effect of any copied features. In this regard, the Supreme
Court offers the following guidance in Cinar:
[35] … many types of works do not lend
themselves to a reductive analysis. Canadian courts have generally adopted a
qualitative and holistic approach to assessing substantiality. “The character
of the works will be looked at, and the court will in all cases look, not at
isolated passages, but at the two works as a whole to see whether the use
by the defendant has unduly interfered with the plaintiff’s right”: J. S.
McKeown, Fox on Canadian Law of Copyright and Industrial Designs
(loose-leaf), at p. 21-16.4 (emphasis added).
[36] As a general matter, it is important
to not conduct the substantiality analysis by dealing with the copied features
piecemeal: Designers Guild, at p. 705, per Lord Hoffman. … Rather, the
cumulative effect of the features copied from the work must be considered, to
determine whether those features amount to a substantial part of Robinson’s
skill and judgment expressed in his work as a whole.
[37]
Cinar further
teaches (at para 39) that a substantiality analysis should focus on whether the
copied elements are a substantial part of the Documentary, not whether they are
a substantial part of the Book. This being so, the entire romantic subplot of
the Book between Helena and Casmir, which the Respondents say differentiates
the two works, is not of substantial importance. However, as the Supreme Court
cautioned in Cinar:
[40] This is not to say that
differences are irrelevant to the substantiality analysis. If the differences
are so great that the work, viewed as a whole, is not an imitation but rather a
new and original work, then there is no infringement. As the Court of Appeal
put it, “the differences may have no impact if the borrowing remains
substantial. Conversely, the result may also be a novel and original work
simply inspired by the first. Everything is therefore a matter of nuance, degree,
and context” (para. 66).
[38]
In determining whether a substantial part of the
Applicants’ work has been taken, the quality and quantity of material taken
should be considered along with the importance and originality of that
material. The extent to which the infringement has adversely affected the
Applicants’ activities and diminished the value of their copyright should also
be considered. Whether the material taken is properly the subject of copyright,
whether the Respondents intentionally took the material to save time and
effort, and whether the material was used in the same or similar fashion as it
was in the copyrighted work, are also questions to address in a substantiality
analysis.
[39]
As to the quality and quantity of material
taken, the core story about Mrs. Halamajowa is clearly taken from the
Documentary. However, that story is based on historical facts in respect of
which there is no copyright. The framing of the story and certain phrases or
words might have been taken from the Documentary into the Book but, unlike a
fictional story, this is not a copying of fictional characters brought to life
in the Documentary. It is apparent upon comparison of the Book with the
Documentary that the place and people and some occurrences are at least
recognizably similar between the Book and the Documentary. But these are also
all facts.
[40]
The Applicants claim infringement by the
Respondents in respect of the well-delineated characters in the Documentary,
and rely on Anne of Green Gables, arguing that the characters in the
Book are clearly based on and are virtually identical to the individuals in the
Documentary. The Applicants’ reliance upon Anne of Green Gables is
misguided, however, because there are no fictional characters in the
Documentary; there are only real people or references to and recollections of
once real persons, and there cannot be copyright over a real person, whether
dead or alive.
[41]
Furthermore, although the Applicants insist
there is an abundance of verbatim or nearly verbatim copying, this is merely
one aspect to assess in a substantiality assessment because “copyright may be infringed by a work which does not
reproduce a single sentence of the original” (see: Cinar at para
27).
[42]
In this case, there is little, if any, verbatim
copying of any dialogue from the Documentary into the Book. At most, there is
but one instance where the Book uses some exact words from the Documentary;
that is, where Fay Malkin, one of the Jewish children hidden by Mrs.
Halamajowa, says her aunt told her that a German soldier said: “It doesn’t matter. We’ll get the mother later anyway”
after the soldier and a Jewish policeman had taken the mother’s baby. The Book
uses the following words: “ ‘Doesn’t matter,’ says the
German soldier. ‘We’ll get the mother later.’ ” At worst, this is but a “particle” from the Documentary. This copying is of a de
minimus nature, and clearly unlike that in Icotop Inc. c Ferrand, 2005
QCCS 59672, 146 ACWS (3d) 540, where the court found (at para 147) that the
defendant, who had been involved in the production of a documentary film and
later wrote a book which reproduced about 75 percent of the lines in the film,
had infringed the copyright in the film. In any event, the parties’
disagreement over exactly how many words were or were not copied verbatim is of
less importance than the consideration of the two works each as a whole.
[43]
As to the extent to which the alleged
infringement has adversely affected and diminished the value of the Applicants’
copyright, the Applicants allege that the Book is being mistaken as the true
story, that the Documentary is now used less for learning and education in
favour of the Book, that they are receiving less speaking engagements, and that
the number of screenings of the Documentary has declined. However, the evidence
in the record shows that the number of speaking engagements and screenings were
declining even before publication of the Book, a fact which casts some doubt on
the cause of this decline.
[44]
As noted, the material that is properly the
subject of the Applicants’ copyright is their expression of Mrs.
Halamajowa’s story, not the story itself. It is difficult to see how the
Applicants’ copyright has in fact been infringed at all by the Book. Although
there is little evidence either way regarding any time and effort saved by Ms.
Witterick, she clearly used the Documentary for reference and, while taking
material from the Documentary saved her the time and effort of re-creating the
research efforts performed by the Applicants, this is not sufficient to find
that she has infringed the originality of the Applicant’s work. The
originality of the Documentary remains intact despite the fact the Book has
taken historical facts as recounted in the Documentary.
[45]
The Book uses the facts in a way similar to that
in the Documentary; that is, to tell the story of Francizska Halamajowa and to
bring attention to this particular story. That being said, there is a
significant and material change in medium in the telling of the story, from the
audio-visual of the Documentary to the written words and fictionalized
characters of the Book, and the change from a documentary to a fictionalized
story, both of which are substantial changes from the original use of the facts
by the Applicants.
[46]
Considering the significant differences in
expression, content, form, feel, and experience from the Documentary, it is
apparent, on a qualitative and holistic view, that the Book is not a mere
imitation of or substantial taking from the Documentary. On the contrary, the
Book in its own right constitutes a new and original work of fiction emanating
from historical facts; as a whole, it does not infringe the Applicants’
copyright. The Documentary is a non-fiction film; it is set in the present but
reflects on the past to tell a story through a visual and auditory medium; near
the end of the Documentary, there is a stirring statement that the Jewish
families rescued by Mrs. Halamajowa “altogether, they
have more than 100 descendants alive today.” In contrast, the Book is a
fictional novel originating from historical facts; it is targeted specifically to
young people, told in the first person from the perspectives of four
characters, and employs a fictional character not based on any real person from
the Documentary.
[47]
Although the Documentary and the Book each recount
some of the same facts of Francizska Halamajowa’s story, there is no
substantial taking or use by the Respondents of anything owned by the
Applicants because the use of common historical facts is not copyright
infringement. The Respondents have not appropriated or taken a substantial
portion of the Documentary’s originality. It is difficult to identify a single
element taken that is not either something generic or merely a fact.
C.
Have the Applicants’ moral rights been
infringed?
[48]
An author of a work has moral rights in the work
under section 14.1 of the Act:
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14.1 (1) The author of a work has, subject to section 28.2, the right to
the integrity of the work and, in connection with an act mentioned in section
3, the right, where reasonable in the circumstances, to be associated with
the work as its author by name or under a pseudonym and the right to remain
anonymous.
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14.1 (1) L’auteur d’une oeuvre a le droit, sous
réserve de l’article 28.2, à l’intégrité de l’oeuvre et, à l’égard de tout
acte mentionné à l’article 3, le droit, compte tenu des usages raisonnables,
d’en revendiquer, même sous pseudonyme, la création, ainsi que le droit à l’anonymat.
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[49]
Section 28.2 of the Act provides that an
author’s right to the integrity of a work is infringed “only
if” the work is, to the prejudice of its author’s honour or reputation, (a)
“distorted, mutilated or otherwise modified” or,
absent authorization from the author, (b) “used in
association with a product, service, cause or institution.” The courts
have acknowledged that the concept of moral rights has not only a highly
subjective aspect, which in practice only the author can prove, but an
objective one as well. In Prise de parole Inc. v Guérin Éditeur Ltée,
(1995), 66 CPR (3d) 257 (appeal dismissed (1996), 73 CPR (3d) 557 (FCA)),
Justice Denault stated (at para 26) that, in addition to an author’s own
subjective evidence as to how his or her honour or reputation has been
affected: “the assessment of whether a distortion,
mutilation or other modification is prejudicial to an author’s honour or
reputation also requires an objective evaluation of the prejudice based on
public or expert opinion.”
[50]
In this case, there is negligible, if any,
relevant evidence of how the Applicants’ honour and reputation has been
affected by the Book. This is not a case where, for example, the Respondents
have created a collage of stills from the Documentary without permission or
authorization.Although an author has the right to be associated with his or her
work, there is no evidence of prejudice to the honour or reputation of the
Applicants, such that this aspect of their claim for infringement of moral
rights also does not succeed (see: Galerie d’art du Petit Champlain Inc. c
Théberge, 2002 SCC 34 at 17).
[51]
Moreover, there is no expert or public opinion
evidence in the record which would satisfy the objective aspect of assessing
whether the Applicants’ moral rights have been infringed or otherwise violated.
The Applicants’ claim for infringement of moral rights fails on this basis
alone.
[52]
The Applicants seek $2,000,000 in damages for
the alleged infringement of their moral rights by the Respondents. They claim
that their rights to be associated with the Book and to the integrity of the
Documentary have each been infringed. Yet, the Applicants cite no case law in
support of their claims of moral rights infringement. Indeed, the Applicants’
Memorandum of Fact and Law scarcely mentions their claims in this regard and
moral rights were hardly mentioned at all at the hearing of this matter.
Furthermore, and in any event, the Applicants could not reasonably expect that
the Book would attribute anything at all to the Documentary because Ms. Maltz
did not pursue Ms. Witterick’s offer to include “something”
about the Documentary in the Book.
[53]
The Applicants argue that the story has been
distorted by Ms. Witterick. Even if that may be true to a certain extent, that
is of no consequence because the only copyright in Mrs. Halamajowa’s story lies
in the Applicants’ expression of it and not in its facts. Several
aspects of the Book may be objectionable to Ms. Maltz, notably the
fictionalized character of Bronek’s father in the Book who resembles Ms. Maltz’s
great-grandfather who dies from a fall from a roof after having had too much to
drink the night before, but any such objections do not amount to an infringement
of any moral rights.
D.
Damages and Remedies
[54]
In view of my findings and conclusions noted
above, that the Applicants have not established that their copyright and moral
rights in the Documentary have been infringed by the Respondents, it is
unnecessary to consider any issues with respect to what remedies or damages
should be granted.
VI.
Conclusion
[55]
In conclusion, the Applicants’ application
pursuant to subsection 34(4) of the Act is dismissed. They have failed
to establish that their copyright and moral rights in the Documentary have been
infringed by the Respondents.
[56]
The Respondents are entitled to their costs of
this proceeding in such amount as may be agreed to by the parties. If the
parties are unable to agree as to the amount of such costs within 15 days of
the date of this judgment, either party shall thereafter be at liberty to apply
for an assessment of costs in accordance with the Federal Courts Rules.
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