Judgments

Decision Information

Decision Content

T-1890-83
B. Anne Cameron and Nancy Colbert and Associates (Plaintiffs)
v.
Ciné St-Henri Inc., Nielsen-Ferns International Limited, Société Radio-Canada, Office national du film, Institut québécois du cinéma, Société de développement de l'industrie cinématographique canadienne and Famous Players Ltd. (Defend- ants)
Trial Division, Walsh J.—Montreal, October 24; Ottawa, November 3, 1983.
Copyright Practice Whether, in spite of alleged copy right assignment agreement, writer's copyright in work for television series infringed by motion picture As question of jurisdiction merely raised in argument and dependent on care ful examination of agreement, matter to be determined at later stage Plaintiff B. Anne Cameron's agent struck from record, having no interest in copyright as such Admissibili ty of affidavits On motion to strike, presumption of truth of allegations in statement of claim rebuttable where affidavit evidence showing falseness of essential allegation Extent of particulars to be ordered in action for infringement of copy right in literary work Pleadings and particulars to be as succinct as possible Other motions for particulars granted with directions as to extent Copyright Act, R.S.C. 1970, c. C-30, s. 12(4) Federal Court Rules, C.R.C., c. 663, RR. 341, 419(2).
Practice Motion to strike pleadings Admissibility of affidavit Affidavit argumentative but containing material on which motion based Assumption that allegations in statement of claim true on motion to strike Assumption not to be made if evidence in supporting affidavit showing essen tial allegation false or misleading.
Jurisdiction Trial Division Whether action based on copyright infringement or for damages for breach of contract Proceedings not struck for lack of jurisdiction where merely raised in argument Co-plaintiff struck from pro ceedings on strict interpretation of Court's jurisdiction where party lacking standing.
These are a series of motions presented in an action to determine whether there was, in spite of what could be a copyright assignment agreement, infringement of a writer's copyright in his work for a television series when it was allegedly incorporated in a motion picture on the same subject.
Held, the motions result in the following orders. A motion to declare inadmissible an affidavit produced in support of a motion on the grounds that it is argumentative should be dismissed because it contains material upon which the motion is based. A motion to declare another affidavit inadmissible on the grounds that it is introducing evidence on a motion to strike, contrary to Rule 419(2), is also dismissed because the contentious paragraph of the document produced in the affida vit is already before the Court and because it is relevant to the determination of the question of whether this Court has juris diction, an issue which should be decided as early as possible. An added reason is that the affidavit clearly contradicts an essential allegation contained in the statement of claim. While it is a well-recognized presumption that, on a motion to strike, the allegations in the statement of claim are true, it may be rebutted when there is affidavit evidence showing that one of the essential allegations is false.
While it is possible that the Court lacks jurisdiction over the subject-matter itself, the proceedings should not be struck on that ground as the issue depends on a careful examination of the agreement, which should be done at a later stage, especially since the defendants did not specifically seek to strike the proceedings on that basis but merely raised the issue in argu ment. The motion to strike plaintiff Cameron's agent from the record is allowed as it has no interest in the copyright as such.
The motion for particulars is allowed in part. It raises serious questions as to what particulars can or should be ordered in an action for infringement of copyright in an artistic or literary work. The cases on this question, while not extensive, were somewhat contradictory. The patent law cases holding that it is insufficient merely to allege infringement are of little assistance as it is possible to be more precise concerning patent infringe ment. In the case of a literary work, there may be hundreds of passages in respect of which a claim for infringement might be made and it would impose an intolerable burden on a plaintiff at the pleading stage to have to list them and be restricted to such list. The plaintiff is required to give particulars sufficient ly extensive to establish a prima facie cause of action, which may be accompanied by the phrase: "without limiting the generality of the foregoing". The pleadings and the particulars provided with respect to them should be as succinct as possible.
CASES JUDICIALLY CONSIDERED
REFERRED TO:
Sweet v. Maugham (1840), 11 Sim. 51; 59 E.R. 793 (H.C.Ch.); Starr and Crowe-Swords v. Northern Con struction Co. Ltd. et al. (1956), 16 Fox Pat. C. 42 (B.C.S.C.).
COUNSEL:
J. M. Banfill, Q.C. and S. N. Dans for plaintiffs.
D. W. Seal, Q.C. and L. E. Seidman for defendant Ciné St-Henri Inc.
S. E. Barry for defendants Société Radio- Canada and Office national du film.
M. H. Cooper for defendants Institut québé- cois du cinéma, Société de développement de l'industrie cinématographique canadienne and Famous Players Ltd.
SOLICITORS:
Tilley, Carson & Findlay, Toronto, for plaintiffs.
Seal & Associés, Montreal, for defendant Ciné St-Henri Inc.
Deputy Attorney General of Canada for defendants Société Radio-Canada and Office national du film.
Engle, Schwartz, Toronto, for defendants Institut québécois du cinéma, Société de déve- loppement de l'industrie cinématographique canadienne and Famous Players Ltd.
The following are the reasons for order ren dered in English by
WALSH J.: A series of motions were presented and argued simultaneously in this matter, defend ants being represented by three different attorneys, one representing Ciné St-Henri Inc., another representing defendants Société Radio-Canada and l'Office national du film, and a third repre senting l'Institut québécois du cinéma, la Société de développement de l'industrie cinématogra- phique canadienne and Famous Players Ltd. Since the defences of all defendants will not be identical the motions presented raise different issues, but to some extent overlap each other so that an order issued on the motion of one group of defendants may also be of benefit to the other defendants, notably with respect to the jurisdiction of the Court and with respect to particulars. While sepa rate orders must be issued on each motion in view of the different issues raised by some of the defendants, it is not desirable that there should be duplication. These reasons will therefore deal in general with all the issues raised, and the separate orders will be based on them.
The motion most fully argued in the interest of all defendants was that on behalf of Ciné St-Henri Inc. to whom defendant Nielsen-Ferns Interna tional Limited assigned its rights in its agreement
of February 20, 1979 with plaintiff B. Anne Cam- eron. This motion seeks to strike certain para graphs of plaintiffs' amended statement of claim as disclosing no reasonable cause of action, and in the alternative for particulars with respect to a number of paragraphs of it, enumerated in the order to be rendered. Moreover it seeks to strike Nancy Colbert and Associates as co-plaintiff in the action, and during the course of argument raised the issue of jurisdiction of this Court over the subject-matter of the action itself, although no motion was made for leave to file a conditional appearance for this purpose.
In the affidavit of Marie Josée Raymond of September 13, 1983, supporting the motion, para graph 7 states that in the contract referred to in paragraph 10 of the amended statement of claim, paragraph 23, subparagraph (a) reads as follows:
... the parties are entering into this agreement as employer and employee and, ... all rights in and to the proceeds and results of the writer services arising in the course of the producer's employment of the writer hereunder shall be the exclusive property of the producer, the producer being the author thereof and being entitled to the copyright therein together with all renewals and extensions thereof.
One of the motions argued was that of plaintiffs seeking an order that this affidavit is inadmissible in whole or in part and should not be considered by the Court on hearing of the motion of Ciné St-Henri Inc. This is a somewhat extraordinary motion suggesting that the Court should not con sider the affidavit required in support of the motion to strike or for particulars, and, as a result, at the opening of the hearing counsel for Ciné St-Henri Inc. submitted a further affidavit of Marie Josée Raymond which merely annexes the entire agreement of February 20, 1979 from which the extract had been quoted in the previous affida vit, pointing out that since the original is in plain tiffs' possession and is referred to in the statement of claim, the production cannot take plaintiffs by surprise. While it is true that some of the para graphs of the affidavit of September 13, 1983 are argumentative and notably paragraphs 4, 5 and 6 thereof, it does contain the extract from the agree ment (supra) in paragraph 7 thereof on which said defendant's motion to strike is based, and is admis-
Bible, so plaintiffs' motion that it should not be considered in deciding said defendant's motion will be dismissed with costs.
There is considerable doubt as to whether the second affidavit of Marie Josée Raymond pro duced at the hearing annexing the entire agree ment between Nielsen-Ferns International Limited (the producer) and plaintiff B. Anne Cameron, (the writer) should be admitted in view of the provisions of Rule 419(2) [Federal Court Rules, C.R.C., c. 663] which provides that "No evidence shall be admissible on an application under para graph (1) (a)", which is the paragraph on which said defendant's motion, in so far as it seeks to strike certain paragraphs of plaintiffs' action is based, on the grounds that "(a) it discloses no reasonable cause of action".
Said defendant Ciné St-Henri Inc. sought to amend its motion to overcome this difficulty by seeking an order under Rule 341 to seek a judg ment "at any stage of a proceeding" on the basis of the document filed in Court (i.e. the agreement) but I do not consider that Rule to be appropriate in the circumstances of this action, nor can it be used as an indirect means of filing a document which it might not otherwise be possible to file on the hearing of this motion so this verbal applica tion to amend is refused. However I did permit the production of the entire agreement which will obviously be essential to any determination of the action, since the contentious paragraph in it on which the motion to strike is based is before the Court in any event, and it is clearly in the interest of all parties to determine at an early date, if possible, if in fact this Court has jurisdiction. This is all the more so in view of the very surprising and apparently totally erroneous statement in para graph 16 of the amended statement of claim that "It was an expressed provision of the agreement of February the 20th, 1979, that copyright in the work to be created by the Plaintiff, B. Anne Cameron, would remain in her" which is in com plete conflict with paragraph 23(a) of the agree ment (supra).
I am well aware of the constant jurisprudence to the effect that in considering a motion to strike the Court must assume that all the allegations of the statement of claim are true, and on that basis decide whether or not there is a cause of action disclosed by the said statement of claim. However when the Court has before it evidence in the supporting affidavit clearly showing that an essen tial allegation, and in fact an allegation on which the very jurisdiction of the Court is based, is not true, or is at least erroneous and misleading, it would be unreasonable to expect the Court to shut its eyes and render judgment on the assumption that the allegation is true.
The question of jurisdiction must therefore be considered. Unless the action is based on copyright infringement it is merely an action for damages between subject and subject based on breach of contract and within the jurisdiction of the courts of a province.
Plaintiffs' counsel argues vigorously, (now invoking the entire agreement the production of which he opposed) that it incorporates the terms of the Independent Producers Agreement which forms part thereof. This latter is an agreement between the Canadian Association of Motion Pic ture Producers, the Canadian Film and Television Association, the National Film Board and the Association of Canadian Television and Radio Artists covering freelance writers of theatrical films, television programs and other productions. This is a very lengthy and involved agreement covering payments, rights of the parties, residuals, etc. and is revised from time to time. The agree ment in effect from April 1, 1978 to March 31, 1980 was that annexed to the contract of February 20, 1979. While it has since been superseded by an agreement running from April 1, 1980 to March 31, 1983 as set out in paragraph 15 of the amend ed statement of claim, this latter version is not before the Court, and would, in any event, only affect the quantum of the claim, and cannot be used to interpret the contract made on February 20, 1979 on which the present proceedings are based. Plaintiffs' counsel argues that clause A5 of the Independent Producers Agreement in effect at the time read as follows:
It is agreed that all rights negotiated under this Agreement or in any individual contract between a writer and a producer
shall ordinarily be in the form of a licence from the writer to the producer for a specific use during a specified term of whatever right is in question.
and that Article A702a) and b) read:
A702 All contracts with the writer shall specify or include:
a) ownership of basic rights in the material;
b) a delineation of rights purchased;
Plaintiffs argue that all that was transferred to the producer was a licence for the specific use of the writer's original work for the 5-part television series and that it was never contemplated that a motion picture would be made incorporating plain tiff B. Anne Cameron's work so that she never transferred any copyright to the producer for the use of her work for other purposes than what was contemplated in the agreement.
It is of interest to note however that, dealing with television productions, clause C105 read:
C105 The producer may terminate a contract at the end of any instalment in C103 or C104, in which case any copyright held by the writer in the work reverts to the writer.
The Independent Producers Agreement there fore clearly does not prevent a writer from trans ferring a copyright to her employer the producer as was certainly done in this case, but it does contemplate licensing the use for a specific pur pose after which, when it has been accomplished, the copyright reverts to the writer.
There is nothing in this which would be contrary to subsection (4) of section 12 of the Copyright Act' which reads as follows:
12....
(4) The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to territorial limitations, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in the right by licence, but no such assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorized agent.
Without going into further details of the terms of the agreement of February 20, 1979 it does, however, appear to contemplate the possibility of the material being used for a motion picture and,
1 R.S.C. 1970, c. C-30.
in this event, the terms of payment therefor, so it may well be that the entire copyright for all pur poses was assigned to the producer by the agree ment. This is not a matter for the Court to deter mine at this stage of proceedings however.
In conclusion, with respect to this part of the argument I find that, while it may well be that plaintiff B. Anne Cameron, had no copyright in the material at the time of institution of proceed ings, and hence this Court would have no jurisdic tion, the proceedings should not be struck on the present motion for lack of jurisdiction, especially as that was not specifically sought, but merely raised in argument. I believe however that the issue should be raised at an early date before discoveries or other proceedings, possibly by means of a preliminary determination of a question of law, or a stated case, so that the jurisdiction of this Court may be determined before further steps are taken to proceed on the merits.
With respect to the co-plaintiff Nancy Colbert and Associates, however, I fail to see how this Court can be found to have jurisdiction over them. They are agents of plaintiff B. Anne Cameron duly authorized by her to receive all payments due to her pursuant to the agreement of February 20, 1979. As such they, of course, have an interest in the financial outcome of the present proceedings and, as such, would normally be properly joined as a party. However, they do not have any interest in the copyright as such. Plaintiffs' counsel argued that in a sense plaintiff B. Anne Cameron could be said to have assigned her rights to them (if she had any copyright rights after the agreement of Febru- ary 20, 1979 to assign) but this argument cannot be accepted as no written assignment was made pursuant to subsection 12(4) of the Copyright Act (supra).
The jurisdiction of this Court has been strictly interpreted by recent jurisprudence, and a party who otherwise would have no standing in the Court to sue cannot acquire it, whether by way of a cross-demand, third party proceeding or other wise, or in this case by way of being made co-plaintiff in an action brought by plaintiff B. Anne Cameron, arising out of her alleged copy right rights over which the Court would have
jurisdiction. The proceeds of any judgment in her favour which might be rendered as a result of these proceedings may no doubt have to be shared with Nancy Colbert and Associates pursuant to whatever agency agreement she may have with them but that is not the concern of this Court, so they will be struck from the proceedings as co-plaintiffs and the style of cause amended accordingly.
Dealing specifically now with the motion of defendant Ciné St-Henri Inc. to strike certain paragraphs of plaintiffs' amended statement of claim, specifically paragraphs 17, 19, 21, 22(a),(b),(c),(d),(e),(f),(g) and (h), or in the alternative to order certain particulars, the said paragraphs will not be struck, but some of the particulars sought by defendant will be dealt with, as follows:
1. The complete address of plaintiff B. Anne Cameron in Nanaimo. This is not required to enable defendant to plead, and can readily be obtained on discovery, so no answer will be ordered.
2. These details are irrelevant, Nancy Colbert and Associates having been struck as co-plaintiff.
3. [Paragraphs] 12(a),(b),(c),(d) and (e). While it might appear that these dates would be known to said defendant, plaintiff should give these dates, if she has a record of them.
4. The agreements speak for themselves and I have already stated that the subsequent agreement would only perhaps be relevant with respect to damages. No particulars ordered.
[Paragraphs] 6(a) and 8(b). The fees due to plaintiff B. Anne Cameron are presumably those due by virtue of the agreement and Independent Producers Agreement with which defendant is familiar, but if plaintiff is claiming more than this as "fees" then particulars should be given.
[Paragraph] 7(a). Defendant is aware of what publicity has been used so does not require particulars.
[Paragraph] 9(a). While Nancy Colbert and Associates is not permitted to be a plaintiff in this
Court, defendant was by notice duly acknowledged required to make payment of sums due to B. Anne Cameron to them so these particulars should be given.
[Paragraphs] 8(c), 9(c) and (d). With respect to particulars of allegations in paragraphs 22(c) and (d) relating to exemplary damages and damages for loss of enhancement of reputation, these will be matters for the Court to decide after a hearing on the merits or on a reference as to damages and no particulars are required to enable defendant to plead.
This leaves us with paragraphs 5, 6(b), 7(b), 8(a), 8(d) and 9(b) and 9(e) which raise serious questions as to just what particulars can or should be ordered in an action for infringement of copy right in an artistic or literary work. The jurispru dence on this issue is not extensive and somewhat contradictory.
Plaintiff relies on the old British case of Sweet v. Maugham 2 which held that it is sufficient for plaintiff to allege generally that the defendant's work contains passages that have been pirated from plaintiff's work and the Court will compare the two works. On the other hand defendant refers to the case of Starr and Crowe-Swords v. North ern Construction Co. Ltd et al. 3 in which Macfar- lane J. in the Supreme Court of British Columbia held that particulars of any allegation in pleadings should be given which define the issues so that surprise at trial may be prevented. In that case the issue was confined to a plan adopted by defendants which was a colourable imitation of the plan referred to in the statement of claim.
Fox: The Canadian Law of Copyright and Industrial Designs, Second Edition, has this to say at page 448:
It would seem that the defendant is entitled to particulars indicating what parts of the plaintiffs work the plaintiff alleges the defendant has pirated and this is particularly true where the plaintiffs work is entitled to copyright only in part ....
and again
On the other hand, there is authority to the effect that the defendant is not entitled to particulars of the parts of his work
2 (1840), 11 Sim. 51; 59 E.R. 793 (H.C.Ch.).
3 (1956), 16 Fox Pat. C. 42 (B.C.S.C.).
that are alleged to be reproductions of the plaintiffs work; it is sufficient to plead that the defendant's work reproduces the plaintiffs work or a substantial part of it.
The patent law cases which require that particu lars of infringement must be given and that it is insufficient to merely state that there has been an infringement are not of great assistance as it is possible to be more precise with respect to alleged infringement of patents.
In an action for infringement of copyright in a literary work there may be hundreds of passages or phrases or plot situations on which a claim for infringement might be made and it would impose an intolerable burden on a plaintiff at the pleading stage of proceedings to list them all in detail and be restricted to such a list. This is all the more true in the present case where both the work in which plaintiff B. Anne Cameron's copyright subsists, and the allegedly infringing motion picture ver sions are derived from a common source, the novel of the late Gabrielle Roy The Tin Flute/Bonheur d'occasion. Moreover plaintiff allegedly does not even have the script of the motion picture, learning of the infringement as a result of certain admis sions by defendant's counsel in correspondence and perhaps by viewing the motion picture.
The Court hearing the case on the merits will eventually have to make the comparisons. On the other hand it must be said that paragraphs 17, 19(b), 20(b), 21(a), 21(d), 22(c) and 22(f) are too general and vague as drawn to establish a precise cause of action to which defendant can plead.
It appears to me that, in a case such as the present, plaintiff should be required to give par ticulars of a number of phrases, passages or situa tions which she claims are originally created by her and which defendant has allegedly pirated or copied in the motion picture version. Such particu lars should be sufficiently extensive as to establish a prima fade cause of action, but may be accom panied by the phrase "without limiting the gener ality of the foregoing" or restricting plaintiff at trial from introducing other examples. A motion for particulars must not be confused with an examination for discovery. Pleadings and the par ticulars provided with respect to them should be as succinct as possible, and the Court record should not be encumbered at the initial stage of proceed-
ings with what might be hundreds of pages of particulars which really constitute the evidence to be used at trial and which may relate more to the gravity of the alleged plagiarism and hence the quantum of damages for which there may well eventually be a reference, than to be necessary to establish plaintiffs case that there has been an infringement.
The order on the motion of defendant Ciné St-Henri Inc. will therefore be in accordance with these findings.
The third motion, that of defendants l'Institut québécois du cinéma, la Société de développement de l'industrie cinématographique canadienne and Famous Players Ltd. merely asks for particulars with respect to paragraphs 17, 18, 19 and 20 of the amended statement of claim. Paragraphs 17, 18 and 19 charge them with having produced a fea ture film incorporating some or all of the original work created by plaintiff for the television series, with having provided financing for and assisted in the said production, and with having published the feature film without the knowledge or consent of plaintiff. Paragraph 20 charges them, by their agents, to have caused dissemination of publicity attributing authorship to a person other than plaintiff.
Counsel for said defendants admits that they provided financing but denies that they assisted in the production. In answer plaintiffs counsel con tends that the agreements with them speak for themselves and that said defendants well know the extent of their involvement so cannot be said to be taken by surprise. However, pleading a conclusion arising from a contract is not the same as pleading material facts. A general denial in a pleading without giving any particulars is inacceptable so said defendants must have some particulars of the involvement in the production, assisting in some other way than by financing, publishing the film and dissemination of publicity in connection there with attributing authorship to a person other than plaintiff. Plaintiff should indicate the facts on which she relies in making these allegations to the extent that they are within her knowledge and not within the sole knowledge of said defendants.
The fourth motion is a motion for particulars by defendants la Société Radio-Canada and l'Office national du film du Canada requesting particulars similar to those sought by Ciné St-Henri Inc. in its motion which has already been dealt with. Counsel indicated said defendants have already received some particulars and are now limiting their motion to paragraphs 17, 20 and 22(b) of the amended statement of claim. Paragraph 17 requests precise particulars with respect to the alleged plagiarism and I have already indicated in the Ciné St-Henri motion how this should be dealt with, and limited particulars on the same basis should be furnished to these defendants. The same applies to the par ticulars sought with respect to paragraph 20—in the portion of said defendants' motion enumerated as 20(c). With respect to 20(a) and (b) said defendants are well aware of the publicity, if any, disseminated by them attributing authorship to someone other than B. Anne Cameron, and the names of the agents who have disseminated it.
Plaintiff should give some examples of such publicity of which she is aware, without being limited to this, sufficient to establish that there has been some such publicity, but defendants are well aware of what agents if any disseminated it so plaintiff should not be required to particularize this. With respect to paragraph 22(b) the motion states that this relates to paragraph (d) of the amended statement of claim dealing with exem plary damages and I have already indicated that this is a matter for the Court after trial and not for particulars. During argument counsel for said defendants suggested that it was paragraph 22(d) of his motion which he had in mind. If so, this relates to paragraph 22(f) of the amended state ment of claim and again seeks precise details of the portion of plaintiff's work allegedly wrongfully used which plaintiff seeks to restrain, and here again this has been dealt with in the Ciné St-Henri motion and need not be repeated.
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