Hager v. ECW Press Ltd. (T.D.), [1999] 2 F.C. 287


T-9-98

Barbara Hager (Plaintiff)

v.

ECW Press Ltd., Dallas Williams and General Distribution Services Limited (Defendants)

Indexed as: Hagerv. ECW Press Ltd. (T.D.)

Trial Division, Reed J."Vancouver, September 8, 9, 10 and 24; Ottawa, December 21, 1998.

Copyright Infringement Plaintiff writing book on well known Aboriginal CanadiansAlleging major passages from chapter of book on singer Shania Twain incorporated into defendants' book about same performer, infringing copyrightChapter based on interviews with TwainNo permission given for copied excerptsSubstantial amount of work takenCase law on quotations from interviews reviewedF.C.A. decision in Tele-Direct not realigning Canadian copyright law from U.K. to U.S.A.Not intending significant departure from pre-existing lawCopyright not covering factsFair dealing exception in Copyright Act, ss. 29, 29.1, 29.2 not applicableUse of plaintiff's work not made for purpose of research, criticismEvidence concerning industry practice confused, unreliable — —Industry practicenot sanctioning copyright breachesDefendants breaching plaintiff's copyright, liable to damages under Act, s. 35.

This was an action claiming damages for copyright infringement in which the plaintiff alleged that 16 major passages from a chapter of her work, Honour Song: a Tribute, were incorporated by the defendants into their work titled Shania Twain: On My Way. In 1996, the plaintiff's work on well known Aboriginal Canadians was published. Her work contained a nine-page chapter on Shania Twain, based primarily on her interviews with the country music star. At about the same time, Michael Holmes (using the pseudonym Dallas Williams) was asked by a publisher, ECW Press Ltd., to write a book about Shania Twain. The terms of the contract that Holmes signed with the publisher required him, at his expense, to secure permissions to use any copyrighted materials. Neither he nor his publisher sought permission from the plaintiff to use any part of Honour Song. In July 1998 another publisher, McClelland-Bantam Inc., released a smaller paper-back version of the Holmes book in which many of the passages that the plaintiff claimed constituted an infringement of her copyright had been deleted or modified. This case raised a number of issues, namely: (1) whether copyright infringement resulted from the use made of plaintiff's work; (2) the applicability of the case law invoked by the parties; (3) the fair dealing exception; (4) the defendants' argument based on industry practice and (5) quantum of damages.

Held, the action should be allowed.

(1) Copyright is defined in the Copyright Act as the right to produce or reproduce a work or any substantial part thereof. Infringement exists when the work is copied either exactly or by way of colourable imitation. The determination of whether a substantial part of a work has been taken is a question of fact. One-third of the plaintiff's chapter on Shania Twain was incorporated into the defendants' book. Other than the direct quotes of Shania Twain's words, it was not verbatim copying, but the same concepts, thought patterns and even sentence structure could be found. In terms of quantity and quality, a substantial and valuable part of the plaintiff's work was taken. As far as the motivation and effect of the taking are concerned, Holmes copied the plaintiff's work to save himself expense and labour and the taking was intentional. The effect of authorizing the copying of large portions of an individual's work would be to decrease an author's incentive to create. The use made by the defendants of the plaintiff's work constituted the copying of a substantial part of her work, either directly or by colourable imitation. With respect to the smaller version of the defendants' book, the copying did not constitute the taking of a substantial part of the plaintiff's work in light of the lesser quantity taken and the deletion of the direct quotes.

(2) Under Anglo-Canadian case law (namely Express Newspapers plc v News (UK) Ltd, and Gould Estate v. Stoddard Publishing Co.), as far 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. Most of the American case law respecting quotations from interviews relates to the fair use provisions of that country's copyright law. The defendants relied on the recent Federal Court of Appeal decision in Tele-Direct (Publications) Inc. v. American Business Information, Inc. in arguing that there was neither creativity nor originality on plaintiff's part in recounting the words used by Shania Twain during her interview. That decision, however, dealt with a compilation of data (a sub-compilation of the yellow pages of a telephone directory), an entirely different type of work from those at issue herein. Contrary to the defendants' argument, the Tele-Direct decision has not realigned Canadian copyright law from the United Kingdom to the United States. The statements in Tele-Direct were not intended to effect a major change in the pre-existing jurisprudence. The law as set out in Express Newspapers and Gould Estate is still the law.

(3) It is trite law that copyright does not cover facts. That was not an issue herein. The question in each case involves an assessment of the similarity of the form of expression in which the facts are conveyed, based on the particular facts of the case. Counsel for the defendants argued that the use made of the plaintiff's work fell under sections 29 and 29.1 of the Copyright Act as being "fair dealing" for the purpose of research or criticism. The quality of a work is not relevant in assessing fair dealing. The most significant factor in interpreting what is meant by "research" in the Act is the fact that, unlike fair dealing for the purpose of criticism or review, or news reporting, there is no requirement that the source be identified. This indicates that the use contemplated by private study and research is not one in which the copied work is communicated to the public. As to the meaning of "for the purpose of criticism" in section 29.1 of the Act, it is not merely the text or composition of a work that may be the object of criticism but also the ideas set out therein. The use made of the quotations and paraphrases from the plaintiff's work was not for the purpose of doing research, nor was it for the purpose of criticizing either the text or the ideas in her book. The American cases cited by the defendants were unhelpful in that our law in this area is different from that of the United States.

(4) The evidence concerning industry practice was confused and unreliable. It could not be concluded from that evidence that there was an industry practice leading to an implied consent to the copying. It is doubtful that "industry practice" can sanction breaches of copyright. It may reflect no more than the economic impracticality, in many instances, of pursuing copyright infringement because of the costs involved. When assessing copyright protection, one must not dissect the work into fragments. It was not appropriate to fragment the plaintiff's work and treat the quotes as independent parts. Her work required skill, judgment and labour for its creation. The taking of parts of her text constituted neither fair dealing, nor could one imply consent as a result of an alleged practice in the industry. The plaintiff's copyright in her chapter "Shania Twain: Buckskin and Cowboy Boots" was infringed by Michael Holmes when he copied parts of it into his book.

(5) Section 35 of the Copyright Act is the provision applicable to the awarding of damages for copyright infringement. Where damages are difficult to assess, as in the case at bar, it is proper to make an award by assuming that there had been a reasonable fee paid by the defendant to the plaintiff for the use of her work. What constitutes a reasonable fee for permission to use part of a copyright work varies depending upon the quantity that is to be used and the purpose to which it will be put. Given the plaintiff's reluctance to allow her work to be used at all, the amount of $9,000 could be considered as constituting a reasonable fee. As to whether the plaintiff should also be awarded a share of the defendants' profits, the Court was forced to accept as a starting point the admission that net revenues by ECW from Canadian sales and sales from United States and Europe were $78,325. Deducting the expenses that have been proven from the admitted revenues left a profit of $34,053 of which the plaintiff should receive 10%. The defendants were therefore required to pay the plaintiff $12,405 as damages as well as the costs of her action.

statutes and regulations judicially considered

Copyright Act, R.S.C., 1985, c. C-42, ss. 2 "infringing" (as am. by S.C. 1997, c. 24, s. 1), 3 (as am. idem , s. 3), 29 (as am. idem, s. 18), 29.1 (as am. idem), 29.2 (as am. idem), 35 (as am. idem, s. 20).

Copyright Act, 1842 (U.K.), 5 & 6 Vict. c. 45.

Copyright Act, 1911 (U.K.), 1 & 2 Geo. 5, c. 46.

Copyright Act, 1921, S.C. 1921, c. 24.

Copyright, Designs and Patents Act 1988 (U.K.), 1988, c. 48, ss. 28, 29, 30.

Copyrights Act, 17 U.S.C. " 107 (1994).

International Convention for the protection of literary and artistic works, signed at Berne on the 9th September, 1886, and revised at Berlin on the 13th November, 1908, was further revised by the Copyright Convention which was signed at Rome on the 2nd June, 1928, R.S.C., 1985, c. 42, Sch. III.

North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, [1994] Can. T.S. No. 2.

North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44, s. 53.

cases judicially considered

applied:

U & R Tax Services Ltd. v. H & R Block Canada Inc. (1985), 62 C.P.R. (3d) 257; 97 F.T.R. 259 (F.C.T.D.); Express Newspapers plc v News (UK) Ltd, [1990] 3 All ER 376 (Ch. D.); Gould Estate v. Stoddard Publishing Co. (1996), 30 O.R. (3d) 520; 31 C.C.L.T. (2d) 224; 74 C.P.R. (3d) 206; 15 E.T.R. (2d) 167; 14 O.T.C. 136 (Gen. Div.); affd (1998), 161 D.L.R. (4th) 321; 80 C.P.R. (3d) 161 (Ont. C.A.).

considered:

Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22 (C.A.); leave to appeal to S.C.C. denied [1998] 1 S.C.R. xv; Walter v. Lane, [1900] A.C. 539 (H.L.); Sands & McDougall Proprietary Ltd. v. Robinson (1917), 23 C.L.R. 49 (Aust. H.C.); Rokeach v. Avco Embassy Pictures Corp., 197 U.S.P.Q. 155 (S.D.N.Y. 1978); Suid v. Newsweek Magazine, 503 F.Supp. 146 (D.C. Cir. 1980); Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985); Craft v. Kobler, 667 F.Supp. 120 (S.D.N.Y. 1987); De Garis v. Neville Jeffress Pidler Pty. Ltd. (1990), 37 F.C.R. 99 (F.C. Aust.); Breen v. Hancock House Publishers Ltd. (1985), 6 C.I.P.R. 129; 6 C.P.R. (3d) 433 (F.C.T.D.); Slumber-Magic Adjustable Bed v. Sleep-King Adjustable Bed Co., [1985] 1 W.W.R. 112; (1994), 3 C.P.R. (3d) 81 (B.C.S.C.); Sillitoe and Others v. McGraw-Hill Book Co. (U.K.) Ltd., [1983] F.S.R. 545 (Ch.D.).

referred to:

British Columbia Jockey Club et al. v. Standen (1985), 22 D.L.R. (4th) 467; [1985] 6 W.W.R. 683; 66 B.C.L.R. 245; 8 C.P.R. (3d) 283 (C.A.); Koch (C.P.) Ltd. Et al. v. Continental Steel Ltd. Et al. (1984), 82 C.P.R. (2d) 156 (B.C.S.C.); affd (1985), 4 C.P.R. (3d) 395 (B.C.C.A.); Feist Publications, Inc. v. Rural Telephone Service Co., Inc. 111 S. Ct. 1282 (1991); Deeks v. Wells, [1931] O.R. 818; [1931] 4 D.L.R. 533 (App. Div.); affg [1933] 1 D.L.R. 353 (P.C.); Kartar Singh Giani v. Ladha Singh, [1934] I.L.R. 16 Lah 103; Matthewson v. Stockdale (1806), 12 Ves. Jun. 270; 33 E.R. 103; Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966); Norman v. Columbia Broadcasting System, Inc., 333 F.Supp. 788 (S.D.N.Y. 1971); University of London Press v. University Tutorial Press, [1916] 2 Ch. 601; Williams & Wilkins Co. v. United States, 420 U.S. 376 (1975); Wright v. Warner Books, Inc., 953 F.2d 731 (2nd Cir. 1991); Salinger v. Randon House, Inc., 811 F.2d 90 (2nd Cir. 1987); Hublard v Vosper, [1972] 1 All ER 1023 (C.A.).

authors cited

Abrams, Howard B. "Originality and Creativity in Copyright Law" (1992), 55 Law & Contemp. Prob. 3.

Allsebrook, David. "Originality is "No Sweat': Originality in the Canadian Law of Copyright" (1992), 9 Can. Intell. Prop. Rev. 270; (1992), 9 R.C.P.I. 270.

Dunlap K. "Copyright Protection for Oral Works: Expansion of the Copyright Law into the Area of Conversations" (1973), 20 Bulletin of the Copyright Society of the U.S.A. 285.

Fox, H. G. The Canadian Law of Copyright and Industrial Designs, 2nd ed. Toronto: Carswell, 1967.

Henderson G. F. Copyright and Confidential Information Law of Canada. Scarborough, Ont.: Carswell, 1994.

Hirsch, Andrea S. "Copyrighting Conversations: Applying the 1976 Copyright Act to Interviews" (1981), 31 Am. Univ. L. Rev. 1071.

Oxford English Dictionary, 2nd ed. Oxford: Clarendon Press, 1989. "criticism" "research".

Patry, William F., ed. Latman's The Copyright Law, 6th ed. Washington: Bureau of National Affairs, 1986.

Ruhga, Vicki L. "Ownership of Interviews: A Theory for Protection of Quotations" (1988), 67 Nebr. L. Rev. 675.

Samuelson, Pamela. "The Originality Standard for Literary Works Under U.S. Copyright Law" (1994), 42 Am. J. Comp. L. 393.

Siebrasse, N. "Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada" (1994), 11 Can. Intell. Prop. Rev. 191.

Tamaro, Normand. The 1998 Annotated Copyright Act. Scarborough, Ontario: Carswell, 1997.

Vaver, David. Intellectual Property Law: Copyright, Patents, Trade-Marks. Concord, Ontario: Irwin Law, 1997.

ACTION for copyright infringement in which the plaintiff alleged that 16 major passages from a chapter of her book had been incorporated into defendants' book. Action allowed.

appearances:

Donald R. Colborne for plaintiff.

Scott A. Turner and Daniel J. McLeod for defendants.

solicitors of record:

Donald R. Colborne, Victoria, for plaintiff.

Blake, Cassels and Graydon, Vancouver, for defendants.

The following are the reasons for judgment rendered in English by

Reed J.: This claim is brought by the plaintiff Barbara Hager against the defendants ECW Press Ltd., Dallas Williams (a pseudonym used by Michael Holmes) and General Distribution Services Limited. They are respectively the publisher, author, and distributor of a book entitled Shania Twain: On My Way. The plaintiff alleges that 16 major passages from a chapter of her book Honour Song: a Tribute were incorporated into the defendants' book, thereby infringing her copyright.

Background Facts

In April 1996, Barbara Hager was in the process of writing a book about individuals of Canadian Aboriginal heritage who have become well known. She sought and was given time to interview the popular country singer and song writer Shania Twain. The book she was writing was eventually published in September 1996. It contained a nine-page chapter on Shania Twain, called "Shania Twain: Buckskin and Cowboy Boots".

While the chapter on Shania Twain included information from a number of sources, it was based primarily on Barbara Hager's interviews with Shania Twain. These were private interviews in which no one else participated. The first was by telephone from Vancouver. The second was an in-person interview for which Ms. Hager flew to Los Angeles paying the necessary expenses. On this occasion she not only interviewed Shania Twain but also was allowed "to shadow" her for half a day, and then interview her for approximately two hours.

Prior to both interviews Barbara Hager prepared questions that she wanted to ask in keeping with the theme of the chapter she planned to write. She took notes of the telephone conversation including the responses to the prepared questions. She taped the in-person interview, with Ms. Twain's permission. In Barbara Hager's view the interview was a personal and unique interchange between her and Ms. Twain because they were of a similar age, came from similar backgrounds, and in their childhood and teen years had had similar experiences.

At about the same time, April 1996, Mr. Lecker of ECW Press Ltd. approached Michael Holmes (Dallas Williams) and suggested that he write a book about Shania Twain. Mr. Holmes was a part-time employee of ECW Press Ltd.; he was the poetry editor. While ECW Press Ltd. was originally a publisher of primarily scholarly works, it had changed direction in recent years so that it was now also producing books for the popular commercial market. The book on Shania Twain was to be one such. It was described by Mr. Holmes, in June 1996, in some promotional material he wrote before he wrote the book, as "a detailed and revealing account of the life, passion, and determination behind Twain's Cinderella story."1

Mr. Holmes collected as much published material as he could concerning Shania Twain and from it began putting together his book. He did few original interviews because he found people would charge. For example, David Hartt, a member of one of Twain's first teenage bands, wanted $7,000 to be interviewed. Mr. Holmes states that he did not obtain a copy of Ms. Hager's book until May 5, 1997, at which time he incorporated parts of it into his book. Mr. Holmes kept no drafts of his text so exactly how and when it was prepared cannot be verified by references to drafts. He did not seek, nor did his publisher seek, permission from Ms. Hager or from her publisher Raincoast Books Distribution Inc. to use any part of Honour Song.

Mr. Holmes submitted his manuscript to ECW Press Ltd. in July 1997. ECW Press Ltd. used a "Guidelines for Authors" pamphlet which contained the following statement:

Permissions for nonvisual material. You will need to request permission to quote any published material that is still under copyright if your quotation exceeds "fair use" guidelines (quoting in order to illustrate or amplify a critical point). [Exhibit 4(32), page 6.]

Mr. Lecker said this wording might have been derived from something that he had written for use in the U.S.A. The terms of the contract that Mr. Holmes signed with ECW Press Ltd. required him, at his expense, to secure permissions to use any copyrighted materials. The only permissions he sought related to his use of photographs in the book.

Barbara Hager purchased a copy of the Holmes (Williams) book on December 1, 1997. On noting the similarities between parts of its text and her own, she contacted her publisher to see if permission had been given for such use. When she was told that it had not she contacted her literary agent, Carolyn Swayze, who in turn contacted Mr. Lecker.

Ms. Hager subsequently wrote to Mr. Lecker setting out her complaints. These are essentially the ones that constitute the basis of the present action:

I'm sending you the 19 pages in Williams' book that contain excerpts from my chapter on Shania Twain in Honour Song. I'm also sending you a copy of my chapter which cross-references the sections that were reprinted in the Williams book. Almost every single direct quote from my interview with Twain that was in Honour Song, appears in the ECW book. In addition, a significant amount of the narrative portions in my book appear in the Williams book, however, they have undergone varying degrees or rewriting from the original manuscript. In some cases, the "paraphrased sections" (as in the section on Shania's relationship to Canadian singer Lawrence Martin on page 127) have only a few words changed from my version, and even have the same sentence structure. I consider this reuse of my writing to constitute plagiarism. [Exhibit 4(16).]

The present action was commenced December 30, 1997, and at the same time the plaintiff moved for an interlocutory injunction. That motion was first scheduled to be heard on January 12, 1998. The defendants requested and were granted an adjournment for the purpose of preparing a response to the motion. The motion was rescheduled for hearing on February 27, 1998. It was not fully argued on its merits at that time. The terms for an interim order, requiring the payment into Court of the gross proceeds from the sale of the book in Canada, were agreed upon by the parties and an order to that effect issued on April 22, 1998.

Sometime around the end of 1997, the defendant ECW Press Ltd. had entered into an agreement with McClelland-Bantam Inc. pursuant to which the latter would publish and distribute a smaller paper-back version of the Holmes (Williams) book, referred to as the "seal edition". The date of the agreement is unknown because the defendants have only found it possible to produce an undated copy. Under the agreement, publication was to be no earlier than June 1998. ECW would retain the copyright, and royalties were to be paid to ECW. The defendants did not disclose to the plaintiff or the Court this planned mass marketing by McClelland-Bantam of the "seal edition".

In July 1998 (or perhaps earlier), the mass market paperback edition of the Holmes (Williams) book was released; many of the passages that the plaintiff claimed constituted an infringement of her copyright had been deleted or modified in that version. Among the changes was the addition of a reference to the source of Mr. Holmes' statements about songwriter Lawrence Martin"statements that Barbara Hager had identified in her letter to Mr. Lecker as one of the "paraphrased sections" of her work that even retained the same sentence structure as her own. The source Mr. Holmes cited in the seal edition for this information was a magazine article in Maclean's . That article contains no reference to Shania Twain.

With respect to the evidence, I have to note that neither Mr. Lecker nor Mr. Holmes left me with the impression that their evidence was reliable. For example, the inability to produce a dated copy of the agreement with McClelland-Bantam Inc. and the failure to disclose to the Court the planned publication and distribution of the seal edition of the book demonstrates the less than candid approach these defendants have taken to the Court and to this litigation.

Use Made of Ms. Hager's Work

In order to illustrate the use that was made of Ms. Hager's work, I will set out four of the sixteen passages that form the basis of her claim of copyright infringement:

Honour Song (Raincoast)

Copyright Infringement

Copyright is defined in the Copyright Act, R.S.C., 1985, c. C-42, as the right to produce or reproduce a work or any substantial part thereof.2 Infringement exists when the work is copied either exactly or by way of colourable imitation.3

Professor Vaver in his text, Intellectual Property Law: Copyright, Patents, Trade-Marks (Concord, Ont.: Irwin Law, 1997), at pages 80-83, has a useful discussion of the jurisprudence relating to what constitutes a "substantial" taking. An annotation is also found in the text by Normand Tamaro, The 1998 Annotated Copyright Act (Scarborough, Ont.: Carswell, 1997), at pages 164-174. What will constitute a substantial taking must be assessed from both a quantitative and qualitative perspective. In U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.), at page 268, Mr. Justice Richard (as he then was) lists a number of factors that have been considered by the courts when assessing whether there has been a substantial taking:

(a) the quality and quantity of the material taken;

(b) the extent to which the defendant's use adversely affects the plaintiff's activities and diminishes the value of the plaintiff's copyright;

(c) whether the material taken is the proper subject-matter of a copyright;

(d) whether the defendant intentionally appropriated the plaintiff's work to save time and effort; and

(e) whether the material taken is used in the same or a similar fashion as the plaintiff's.

Approximately one-third of Barbara Hager's chapter on Shania Twain found its way into the ECW book. Other than the direct quotes of Shania Twain's words, it was not often verbatim copying, but rather the rearranging of sentences, with additional material interspersed, while following the same concepts, thought patterns and sometimes sentence structure. Ms. Hager's reaction on reading the ECW book was that it appeared as though someone had scanned her work onto the computer and then switched the words and sentences around a bit, using a thesaurus to change some words. I doubt that the changes were sophisticated enough to require the use of a thesaurus but the conclusion I draw from the facts is that in terms of quantity, a substantial amount of her work was taken. In addition, the parts of her book that are most valuable to her were taken: the direct quotes from Shania Twain. I conclude that qualitatively a very valuable and significant part of her work was taken. I turn now to consider some of the other factors that the above-noted sources have indicated are relevant.

The plaintiff's evidence was that she has been adversely affected by the defendant's copying of her work because she was forced to change the focus of a longer work she was writing on Shania Twain, and rewrite that book. At the same time, the book that she completed has apparently been very well received by the publisher and there are plans to incorporate the whole text of the in-person interview with Shania Twain into it as an appendix. Her work Honour Song does not directly compete with the ECW book. These last two factors are dealt with further when discussing damages, although as noted, the references cited to me suggest they are also relevant to whether the taking was substantial. In so far as the motivation and effect of the taking are concerned, there is no doubt that Mr. Holmes copied Barbara Hager's work for the purpose of saving himself expense and labour and that the taking was intentional. Also, I have no doubt that the effect of authorizing the copying of large portions of an individual's work in the fashion that occurred in this case would decrease an author's incentive to create.

The determination of whether a substantial part of a work has been taken is a question of fact: British Columbia Jockey Club et al. v. Standen (1985), 22 D.L.R. (4th) 467 (B.C.C.A.), at pages 471-472 (Macdonald J.A.); Koch (C.P.) Ltd. Et al. v. Continental Steel Ltd. Et al. (1984), 82 C.P.R. (2d) 156 (B.C.S.C.), at page 164 (Paris J.); affirmed by (1985), 4 C.P.R. (3d) 395 (B.C.C.A.) (Hinkson J.A.). I have set out in summary form the evidence and conclusions I reach that relate to most of the factors listed in Professor Vaver's text and in the U & R Tax Services case. In the context of this case, I consider the main factors that lead to a conclusion that a substantial part of the work was taken are the quantity of the material taken and the quality of that material (the direct quotes from Shania Twain). I conclude, on these facts, that the use made by the defendants of the plaintiff's work constituted the copying of a substantial part of that work (some directly, some by colourable imitation).

I do not find it as easy to come to the same conclusion with respect to the seal edition. All the direct quotes were dropped from that edition and more than half of the colourable imitation sections were deleted completely. There are still passages that are clearly rearrangements (colourable imitations) of Ms. Hager's text, but I find it difficult to conclude in the light of the lesser quantity taken and the deletion of the direct quotes, that the copying constituted the taking of a substantial part of the work, and I do not do so.

It is now necessary to assess the defendants' claim that no breach of copyright occurred because the direct quotations from Shania Twain are not the proper subject of copyright and the use made of Ms. Hager's work was "fair dealing".

Defendants' Position

The defendants argue that, while Mr. Holmes took parts of Barbara Hager's book, this does not constitute copyright infringement because he took mainly quotations of Shania Twain's words, words used by her in the interviews given to Ms. Hager. It is argued that such quotations are not subject to copyright. Furthermore, the defendants argue that Mr. Holmes only took facts, not the mode of expression in which those facts were recounted by Ms. Hager. Alternatively, counsel argues that Mr. Holmes' actions come within the fair dealing exception of sections 29 [as am. by S.C. 1997, c. 24, s. 18] and 29.1 [as am. idem] of the Copyright Act, R.S.C., 1985, c. C-42. Lastly, it is argued that in any event, the practice in the industry is to condone such taking.

The defendants rely heavily on the recent Federal Court of Appeal decision in Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22 (C.A.), leave to appeal denied, [1998] 1 S.C.R. xv. They argue that there was neither creativity nor originality on the part of Barbara Hager in recounting the words used by Shania Twain during the interview and therefore Ms. Hager cannot assert copyright therein. It is argued that the Tele-Direct decision has altered the pre-existing jurisprudence, if it ascribed copyright to the interviewer, and that it is now appropriate to consider the United States jurisprudence relating to originality for the purposes of the present fact situation.

I will refer briefly (1) to some of the Anglo-Canadian jurisprudence upon which counsel for the plaintiff relied; (2) to some of the mainly American jurisprudence to which counsel for the defendants has referred; (3) to the Tele-Direct decision; (4) to the arguments relating to lack of copyright in facts; (5) to the fair dealing exception in sections 29 and 29.1 of the Copyright Act; and (6) to the argument based on industry practice.

Quotations from Interviews"Anglo-Canadian Jurisprudence

The Anglo-Canadian jurisprudence upon which counsel for the plaintiff relies is: Walter v. Lane, [1900] A.C. 539 (H.L.); Express Newspapers plc v News (UK) Ltd, [1990] 3 All ER 376 (Ch. D.); Gould Estate v. Stoddard Publishing Co. (1996), 30 O.R. (3d) 520 (Gen. Div.); affirmed by (1998), 161 D.L.R. (4th) 321 (Ont. C.A.). These cases demonstrate that under Anglo-Canadian law, in so far 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.

In Walter v. Lane, it was held that copyright in the verbatim reports of public speeches given by the Earl of Rosebery, that were taken down by reporters for The Times, belonged to the proprietors of The Times, the reporters having assigned their copyright to the proprietors. While counsel for the defendants argues that this is no longer good law for a number of reasons, one being that it pre-dates the 1911 amendment [1 & 2 Geo. 5, c. 46] to the U.K. Copyright Act, 1842 [5 & 6 Vict., c. 45], at which time the word "original" was added to the Act, the jurisprudence does not support that contention. For example, in Sands & McDougall Proprietary Ltd. v. Robinson (1917), 23 C.L.R. 49 (Aust. H.C.) there is a discussion of the validity of Walter v. Lane in light of the 1911 amendments to the U.K. Copyright Act which were appended to the Australian Act.

It was argued in Sands & McDougall that the law now required inventive ingenuity as well as authorship in the sense used in Walter v. Lane. The Australian High Court rejected the argument at page 55, quoting from Walter v. Lane: "[t]rue it is that the reporter was not the author of the speech; but he was the composer and author of the book . . . Without his brain and handiwork the book would never have had existence." The Court noted that the two expressions "author" and "original work" had always been correlative and that the dictionary definition of author was "the person who originates or gives existence to anything." The Court held that the Copyright Act, 1911 , which was enacted in part to implement the Berlin Convention of 1908 [R.S.C., 1985, c. C-42, Sch. III], did not intend to alter the pre-existing law as set out in Walter v. Lane. In that context the reporter of the speech had been found to be the author of the report, and because it had not existed before, the reporter had "originated" the report.

More recent jurisprudence has dealt with private interviews, a situation closer to that in issue in this case. In the Express Newspapers case, although the decision was based on another aspect of the dispute between the parties, the Court made it clear at pages 379 and 381 that it was the reporters who held the copyrights in the quotations taken down by them in the course of exclusive interviews they conducted with the respective celebrities they were writing about, not the interviewees:

Each of the original stories is made up of two elements. First, there is the news story as such; second, there are the quotations of the words used by the person inter-viewed, . . .

. . . the recorder of spoken words [has] a copyright in the record of those words as distinct from the words recorded.

In the Gould case, the Estate of the late Glenn Gould sought to prevent the publication, by the defendant Carroll, of a book on Glenn Gould when he was a young man. It contained photographs and a narrative. Carroll had taken the photographs and conducted an interview with Glenn Gould in 1956, in order to produce an article for a weekend magazine. Carroll kept the photographs and his notes and tapes of the interview. In 1995 he decided to use these to produce the book that the Estate sought to enjoin. The narrative portion of the book was comprised of extracts from the defendant's conversations with Glenn Gould, which the defendant had recorded in 1956. The Estate argued that copyright in the oral conversations recorded by Carroll rested with the Estate, not with him. This argument was rejected by Mr. Justice Lederman of the General Division, at page 529, on the ground that oral statements are not expressed in material form and, except in the case of an amanuensis, the speaker has no copyright therein. The greater part of this decision focussed on the tort of appropriation of personality.

The Ontario Court of Appeal held at page 324 that it did not need to address the issues in the same manner as the trial judge but would consider the plaintiff's claim only by reference to copyright law:

In my opinion, it is not necessary to decide the issues in this case on the basis of the relatively new development in tort of appropriation of personality when this case so clearly sounds in intellectual property. Put shortly, the motions judge addressed Gould's right to preserve his privacy and exploit commercially his own fame, whereas I would address the proprietary rights Carroll had in the photographs and other material created by Carroll in 1956 and again in 1995.

The Ontario Court of Appeal held that it was Carroll, not Gould's Estate, that held the copyright in the interviews with Gould. In agreeing with the Trial Judge that Gould did not hold a copyright in his oral statements because such statements were not the kind of disclosure the Copyright Act intended to protect"they were not in material form"the Court of Appeal stated at pages 329-330 that it was the defendant who owned the copyright therein:

It is evident from this record that Gould did not have a copyright with respect to his oral utterances or in the "transcriptions" of them, to use the appellants' phrase. To the contrary, Carroll as the author of the text and captions in the book was the owner of the copyright in the very written material the appellants are attempting to suppress.

Once it is established that Carroll owned the unrestricted copyright in the photographs and the written material in the book, there is nothing else to decide. [Underlining added.]

Quotations from Interviews"American Jurisprudence

I turn then to the jurisprudence on which the defendants' counsel relies. Most of the U.S. jurisprudence respecting quotations from interviews relates to the fair use provisions of that country's copyright law (Copyrights Act, 17 U.S.C. " 107 (1994)). Counsel for the defendants relies particularly on the following cases for the proposition that an interviewer does not have copyright in the statements of an interviewee: Rokeach v. Avco Embassy Pictures Corp., 197 U.S.P.Q. 155 (S.D.N.Y. 1978); Suid v. Newsweek Magazine, 503 F.Supp. 146 (D.C. Cir. 1980); Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985); and Craft v. Kobler, 667 F.Supp. 120 (S.D.N.Y. 1987).

The Rokeach decision dealt with a play that had been written by the defendant about an insane English earl who during part of the play believes himself to be Christ. The plaintiff had written a scientific research study, in the field of abnormal psychology, that dealt with three patients each of whom believed he was Christ. For the purposes of this study, Rokeach, and more commonly his research assistants, recorded and subsequently transcribed sessions in which the three patients were present. The defendant borrowed some ideas from the report of this study, one being the confrontation between two delusional Christs. He also used several phrases and words that were reported as having been said by the patients, in order to give his play authenticity. The Court held that copyright does not protect ideas, concepts, and themes; that the two works bore virtually no resemblance to each other, and that the copying was in any event de minimus; and if subject to copyright, which the Court did not believe to be the case, the copying would fall under the fair use exception. In discussing the use that had been made of the actual words spoken by the patients to each other, to Rokeach, or to his research assistants, the Court stated at page 161 that Rokeach could not claim copyright in these words because he did not create them.

In the Suid case, the plaintiff alleged copyright infringement by Newsweek Magazine in a book he had written about John Wayne. Infringement was claimed in quotations from two interviews the author had conducted, one with Michael Wayne, the other with William Wellman. The Court held at page 148, citing the Rokeach decision, that the plaintiff would not have copyright in the interview quotations unless he had obtained copyright assignments from the two interviewees. In the case of the Wayne quotations, the Court refused to consider a consent granted by Wayne to use the quotations as sufficient for the purpose of assigning copyright. An assignment of copyright had been obtained for the Wellman quotations, however, it had not been registered and thus copyright could not be claimed. The Court was of the opinion that with respect to the Wellman quotations fair use would apply because it had never been intended that the interview would have commercial value, and in any case, the amount taken was insubstantial.

Harper & Row is a fair use case that deals only indirectly with statements made by persons other than the author of the work. It concerned the unauthorized use of the unpublished memoirs of former President Gerald Ford, for the purpose of a pre-publication article about the memoirs. The United States Supreme Court held that the taking of 300 words of a 200,000 word manuscript, in the circumstances, was copyright infringement. It held that fair use could not be justified on the ground that the subject-matter was news or because of public interest in it. Counsel for the present defendants relies on a footnote in the dissenting opinion in that case (page 586, note 10). The footnote states that the paraphrasing by an author of another's words, and the paraphrasing of government documents, are not covered by copyright, referring to both the Suid and Rokeach decisions. The majority decision, however, does not deal with the issue of the copyright status in quotations of others, such as Henry Kissinger's words as recounted by Ford, presumably because the majority judges did not find it necessary to do so, having found that there were sufficient reasons based on other parts of the text for concluding that the article constituted a breach of copyright.

Craft v. Kobler is another fair use case. It, like Harper & Row, found that copyright infringement had occurred. The defendant, Kobler, had written a biography of the musician Stravinsky, relying on what was referred to as the Craft-Stravinsky literature. This comprised: fifteen books on Stravinsky of which Craft was either the author or co-author; four "conversation" books written in the form of interviews of Stravinsky by Craft; a three volume compendium of Stravinsky's correspondence with explanations by Craft; and, one volume co-authored by Craft and Stravinsky's widow. Craft was described as Stravinsky's personal assistant and amanuensis. Craft had inherited Stravinsky's copyright interest in these works and the case was mainly concerned with that interest. The Court referred to Suid and Rokeach and stated that a writer could not claim copyright in the statements of another, and thus the use of quotes of third persons taken from the Craft-Stravinsky sources did not infringe Craft's copyright. However, this conclusion did not relate to Craft's interviews with Stravinsky but to Stravinsky's reports of statements made by third parties. Since the particular passages were not relevant to the overall decision, the Court at footnote 8 on page 124 attributed them to the third persons at face value and did not consider whether they were Stravinsky's narrative invention or whether they were the subject of copyright.

Reference can be made as well to the descriptions of this area of United States law that are found in several journals and texts. In K. Dunlap, "Copyright Protection for Oral Works: Expansion of the Copyright Law into the Area of Conversations" (1973), 20 Bulletin of the Copyright Society of the U.S.A. 285, the pre-1976 situation is described. It discusses the protection of oral statements under state "common law" of copyright. In V. L. Ruhga, "Ownership of Interviews: A Theory for Protection of Quotations" (1988), 67 Nebr. L. Rev. 675, at page 684, the author describes the jurisprudence respecting the post-1976 statutory copyright in quotations as being split:

When dealing with statutory copyright, courts have split on the issue of interview ownership. Some courts advocate interviewer ownership of the copyright. Others maintain that the interviewer and the interviewee separately own their respective contributions, unless otherwise agreed. Generally, the court's view of ownership determines the degree of copyright protection available. [Footnotes omitted.]

The article is concerned with the interviewee being able to control the use that is made of an interview, beyond use by the first interviewer. Such use can, of course, be controlled by contract.

In A. S. Hirsch, "Copyrighting Conversations: Applying the 1976 Copyright Act to Interviews" (1981), 31 Am. Univ. L. Rev. 1071, at pages 1082-1083, it is suggested that interviews constitute works of joint authorship:

Under the contemporaneous intent standard, an interview qualifies as a joint work because the interviewer and interviewee meet with each other for the express purpose of conducting an interview. This goal is a manifestation of their intent to merge their respective contributions into one work, thereby establishing a work of joint authorship. Furthermore, because interviews necessitate interaction between two people, individual efforts on the part of either the interviewer or the interviewee cannot produce the same result. A participant in a conversation, therefore, should be considered a joint author of comments made by coparticipants. This proposition has been recognized by some courts. Therefore, although there is precedent supporting a finding that either the interviewer or interviewee individually owns the copyright in an interview, the better view is that the combined effort creates a work of joint authorship. [Footnotes omitted.]

And in Latman's The Copyright Law, 6th ed. (Washington: Bureau of National Affairs, 1986), at page 115, note 3 the position of the United States Copyright Office is described as being that copyright in an interview can be held in part by the interviewee or interviewer or entirely by one or the other depending upon the agreement between them:

. . . with respect to interviews, the Copyright Office has stated:

"A work consisting of an interview often contains copyrightable authorship by the person interviewed and the interviewer. Each has the right to claim copyright in his or her own expression in the absence of an agreement to the contrary. Where an application for such a work names only the interviewee or the interviewer as the author and claimant, and where the nature of authorship is described as "entire text," it is unclear whether the claim actually extends to the entire work, or only to the text by the interviewee or interviewer. In any case where the extent of the claim is not clear, the Copyright Office must communicate with the applicant for clarification."

Compendium II of Copyright Office Practices "317.

An application naming only the interviewer or interviewee as the author but listing "text" instead of "entire text" as the nature of authorship will be interpreted as asserting a claim only for the interviewer or interviewee's portion of the interview.

Effect of Tele-Direct Decision

Counsel for the defendants argues that the jurisprudence in Walter v. Lane, Express Newspapers and Gould Estate cases, as well as being distinguishable because none of it deals directly with a second person taking the quoted words of an interviewee, is no longer good law in Canada because it is all based on the premise that copyright law protects an author's labour. For example, in Walter v. Lane, Earl of Halsbury L.C., said at page 545:

. . . I should very much regret it if I were compelled to come to the conclusion that the state of the law permitted one man to make profit and to appropriate to himself the labour, skill, and capital of another. And it is not denied that in the case the defendant seeks to appropriate to himself what has been produced by the skill, labour, and capital of others. In the view I take of this case I think the law is strong enough to restrain what to my mind would be a grievous injustice.

And Lord Davey, at page 552:

. . . it is a sound principle that a man shall not avail himself of another's skill, labour, and expense by copying the written product thereof. To quote the language of North J. in another case: "For the purposes of their own profit they desire to reap where they have not sown, and to take advantage of the labour and expenditure of the plaintiffs in procuring news for the purpose of saving labour and expense to themselves."

Counsel argues that even if the words of an interviewee were previously copyrightable by the interviewer, as set out in the Express Newspapers and Gould Estate cases, the recent decision of the Federal Court of Appeal in Tele-Direct has overruled that jurisprudence. As noted above, it is argued that the elements of creativity and originality that are now required for copyright protection cannot exist in the quoted words of another. In addition, as I understand the argument, it is that the Tele-Direct decision has turned Canadian copyright law, at least in so far as it is relevant for present purposes, from its previous alignment with the law of the United Kingdom towards an alignment with that of the United States.

I do not interpret the Tele-Direct decision as having such a broad effect. In both the United States and Canada, jurisprudence has defined the requirement that copyright be granted in an "original" work, as meaning that the work originate from the author and that it not be copied from another.4 In the United States this was initially the result of case law; the statutory requirement of "originality" was only added in 1976.5 The requirement that a work be "original" has been a statutory requirement in Canada since 1924 when the Copyright Act, 1921 [S.C. 1921, c. 24] enacted in 1921 came into force. That Act was largely copied from the United Kingdom Copyright Act, 1911. I am not persuaded that the Federal Court of Appeal intended a significant departure from the pre-existing law.6 In the absence of an express decision from the Court of Appeal to the contrary, I think the law as set out in Express Newspapers and Gould Estate is still the law.

One reason for being cautious about not over-extending the Tele-Direct decision is that it deals with an entirely different type of work from those in issue in this case. It deals with a compilation of data (a sub-compilation of the yellow pages of a telephone directory). The appropriate test to be applied when copyright is claimed for works that consist of compilations of data has been a difficult area. This is because such works are not likely to exhibit, on their face, indicia of the author's personal style or manner of expression.

In the Tele-Direct decision the Court of Appeal indicated that the issue before it had arisen because of the amendments to the Copyright Act enacted in 1993 as part of the North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44, s. 53.7 The Court noted that one of the elements required under that agreement was the protection by copyright of data bases, the Court questioned at paragraph 16 whether in fact the amendments had been drafted to effectively accomplish this objective. Interestingly, there is now a Bill before the United States Congress8 to overrule the decision of the United States Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co., Inc. 111 S. Ct. 1282 (1991), a decision in that country that had a result similar to Tele-Direct in this. There is debate among both United States and Canadian authors as to whether the Feist decision is limited to database type cases or will have wider ramifications.9 Given this context and the express references in Tele-Direct to NAFTA and the implementation of that agreement, I am persuaded that the statements in Tele-Direct were not intended to effect a major change in the pre-existing jurisprudence.

Facts

There is no dispute that copyright does not cover facts. This is trite law. Counsel for the defendants argues that the narrative portions of Mr. Holmes book merely constitute the reporting of facts, some of which are only found in Ms. Hager's book, but many of which are also found elsewhere in the published material on Shania Twain. It is argued that there are only so many ways in which you can report facts and this accounts for the similarity in wording and sentence structure.

I do not accept the assertion that there are a limited number of ways in which to recount facts. The method of expression is individual. It can be very different for different authors, as is evident from the text of some of the material to which Mr. Holmes refers as an allegedly common source.

The defendants cited many authorities that have dealt with biographies and that establish the principle that there is no copyright in facts: Deeks v. Wells, [1931] O.R. 818 (App. Div.), at pages 847-848; affirmed by [1933] 1 D.L.R. 353 (P.C.); Kartar Singh Giani v. Ladha Singh, [1934] I.L.R. 16 Lah 103;10 Matthewson v. Stockdale (1806), 12 Ves. Jun. 270; 33 E.R. 103; Harper & Row, supra, at page 621; Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966), at page 306; Norman v. Columbia Broadcasting System, Inc., 333 F.Supp. 788 (S.D.N.Y. 1971), at page 788; Craft v. Kobler, supra, at page 123. The plaintiff does not dispute this. This is simply not an issue. The question in each case involves an assessment of the similarity of the form of expression in which the facts are conveyed, based on the particular facts of the case.

Fair Dealing

The concept "fair dealing" in sections 29, 29.1 and 29.2 of the Copyright Act is quite different from that of "fair use" in the United States.11 The most significant difference is that under Canadian copyright law the use of the copied material must come within one of the specific purposes identified in the statute: research or private study (section 29), criticism or review (section 29.1), or news reporting (section 29.2).

The relevant provisions read:

29. Fair dealing for the purpose of research or private study does not infringe copyright.

29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:

(a) the source; and

(b) if given in the source, the name of the

(i) author, in the case of a work,

(ii) performer, in the case of a performer's performance,

(iii) maker, in the case of a sound recording, or

(iv) broadcaster, in the case of a communication signal.

29.2 Fair dealing for the purpose of news reporting does not infringe copyright if the following are mentioned:

Counsel for the defendants argues that the use made of Ms. Hager's work falls within the concepts "[f]air dealing for the purpose of research" and "[f]air dealing for the purpose of criticism".

I shall refer, first, to some of the evidence that describes the ECW book. Mr. Lecker stated that it "has all the qualities of every scholarly book we publish, which is synthesis of information, gathering of information, careful collation of sources, and attribution"12 (emphasis added). A review in Quill and Quire, a respected journal of Canadian English language literature, was not very complimentary. It stated that the book "reads like a 200-page press release by a record company publicity hack,"13 which relies on newspaper articles and a record store manager who once played in a band with Shania Twain. A review in the Halifax Daily News, however, was more favourable. It lauded ECW Press for having "stumbled on a profitable sideline producing biographies of pop culture icons."14 It described the book as being thorough and comprehensive, although lacking in contact with the star herself. A favourable review also appeared in Country Music News.15 A review in The Globe and Mail referred to the ECW book as a "standard pop bio."16

The quality of a work, of course, is not relevant in assessing fair dealing, but the description of the nature of the book found in these reviews (a standard pop biography) is relevant in so far as it sets the context within which an assessment of the type of use that was made of the copied material is to be determined. Counsel for the defendants argues that any biography is a work of research. Mr. Lecker considered the use that was made of Ms. Hager's text to be fair dealing for the purpose of "criticism". The question whether the use made of Ms. Hager's text falls within either section 29 or 29.1 is, of course, for the Court to answer.

There is a paucity of jurisprudence concerning what is meant by the word "research" in the legislation. One looks of course to the companion concept "private study" for assistance in interpreting what is meant. A second source of guidance is the dictionary definition of the word. The Oxford English Dictionary , 2nd ed. (1989) gives the following definition:

Research (noun): . . . 1. The act of searching (closely or carefully) for or after a specified thing or person. 2.a. A search or investigation directed to the discovery of some fact by careful consideration of study of a subject; a course of critical or scientific inquiry. (Usu. in pl.); b. Without article: Investigation, inquiry into thing. Also, as a quality of persons, habitude of carrying out such investigation.

Research (verb): 1. To search into (a matter or subject); to investigate or study closely. Also, to engage in research upon (a subject, a person, etc.).

In Sillitoe and Others v. McGraw-Hill Book Co. (U.K.) Ltd., [1983] F.S.R. 545 (Ch. D.), "Notes" that were designed for students studying certain literary works that contained large portions from those works were held not to fall under the fair dealing exception. The Court rejected the argument that the authors of the Notes, when dealing with the original works, were engaged in private study or research. In addition, the expression "private study" has been interpreted as not including use for educational purposes: University of London Press v. University Tutorial Press , [1916] 2 Ch. 601, at pages 613-614. The current U.K. copyright legislation, the Copyright, Designs and Patents Act 1988 (U.K.), 1988, c. 48, sections 28, 29, 30 in force as of August 1, 1989, specifically provides that it is only use by the researcher him or herself that is included in the exception of fair dealing for the purpose of research.

An Australian decision De Garis v. Neville Jeffress Pidler Pty. Ltd. (1990), 37 F.C.R. 99 (F.C. Aust.) came to a similar conclusion with respect to that country's copyright law. The defendants in that case tried to argue that a news clipping service they provided was fair dealing since their clients were engaged in research. The Court stated that the relevant activity was that of the copier (Jeffress) not its customers.

The most significant factor, in my view, in interpreting what is meant by "research" in our legislation, is the fact that unlike fair dealing for the purpose of criticism or review, or news reporting, there is no requirement that the source be identified (when the use is for research). This indicates that the use contemplated by private study and research is not one in which the copied work is communicated to the public.

I turn then to the meaning of "for the purpose of criticism" in section 29.1. I note first, that "criticism" is coupled with "review". The principle of statutory interpretation noscitur a sociis would suggest that the two words are likely related. One relationship is that for the criticism or review to occur there need to be excerpts from and references to the works being criticized or reviewed. Also, when criticizing or reviewing any given work it may be necessary to use quotes from others for comparative purposes.

Among the definitions of the word "criticism" found in the Oxford English Dictionary , 2nd ed. (1989) are:

Criticism: . . .

The art of estimating the qualities and character of literary or artistic work; the function or work of a critic. . . . spec. The critical science which deals with the text, character, composition, and origin of literary documents . . . .

The jurisprudence has established that it is not merely the text or composition of a work that may be the object of criticism but also the ideas set out therein. Hubbard v Vosper, [1972] 1 All ER 1023 (C.A.) is most often cited as setting out the relevant tests.

Despite Mr. Holmes and Mr. Lecker's efforts to characterize the use made of Ms. Hager's work as being for the purpose of research or for the purpose of criticism, it simply does not come within those definitions. The use made of the quotations and paraphrases from Ms. Hager's work was not for the purpose of doing research, nor was it for the purpose of criticizing either the text or the ideas in Barbara Hager's book.

Counsel for the defendants again cited United States authorities: Williams & Wilkins Co. v. United States, 420 U.S. 376 (1975); Rosemont Enterprises, supra; Wright v. Warner Books, Inc., 953 F.2d 731 (2nd Cir. 1991); Salinger v. Random House, Inc., 811 F.2d 90 (2nd Cir. 1987). As noted above, I am reluctant to refer to these decisions because our law in this area is so different from that of the United States.

Industry Practice

The evidence concerning industry practice is confused and unreliable. Mr. Lecker gave evidence that there was no difference in the practice in the industry between academic papers and mass market popular commercial works, with respect to when permission to copy the work of another was sought. He indicated that in both cases it was the length of the passage copied that was the governing factor. He stated that "what people will often do when they're writing their articles is to write using smaller quotations precisely so that they don't appear to be taking, you know to be taking, wholesale chunks out of somebody's work."17 He states that this is done all the time within the Canadian publishing industry. Mr. Lecker's opinion was that it was the practice in the Canadian industry for biographers to use quotations from interviews (private or public) which have been published, without first seeking permission from either the publisher of the interview or the interviewee. His evidence was also that there were no absolute standards. His evidence was self-serving, and as I have indicated elsewhere, I have no confidence in the accuracy of his evidence.

Ms. Swayze gave evidence that there is a distinction between academic writing and books written for the popular commercial market. One of her reasons for saying that such exists was that, in her opinion, while academic writing may assist the author in achieving tenure, there is usually little money made from it. Also, she asserted that quite different types of works are involved in the case of commercial writers, and while academic writers are usually pleased to see their works referred to and excerpted by their peers, because it enhances their reputations, commercial writers are not pleased to have their work copied because it can diminish the commercial value of their work.

Ms. Swayze also indicated that all copying from another's work should be supported by permission from the first author, except for very small parts. When asked, however, whether it was Canadian publishing industry practice to require permission for every quote she said "I do not know."18 At one point in her evidence she stated that she doubted "that anyone would seek signed permission to use the actual words spoken by a person,"19 while elsewhere she indicated the contrary. In response to whether it was unusual to see permissions given for the quoted words of celebrities, she answered that it was "Not at all unusual, and it's my position that it would be mandatory."20 Ms. Swayze stated that freelance writers typically would sell an interview, in three, four or five different places and that the Professional Writers' Association of Canada was very active in protecting the copyright for writers in such situations.21 From the description above it is clear that Ms. Swayze's evidence was confused and contradictory. I am not prepared to rely on it.

I cannot conclude from the evidence that an industry practice exists that leads to an implied consent to the copying. Indeed I doubt that "industry practice" can sanction breaches of copyright. It may reflect no more than the economic impracticality, in many instances, of pursuing copyright infringement because of the costs involved. In Breen v. Hancock House Publishers Ltd. (1985), 6 C.I.P.R. 129, at page 133, Mr. Justice Joyal of this Court held that "[a]cademic treatises, research papers and other written material enjoy as much copyright as any other work," and that "[i]t is not open to anyone to presume that because . . . academic treatises are meant to be used by others that they should thereby be fully available to anyone" to copy. In Slumber-Magic Adjustable Bed v. Sleep-King Adjustable Bed Co. , [1985] 1 W.W.R. 112 (B.C.S.C.), Madam Justice McLachlin commented on the argument that an infringement was justified because everyone in the industry used everyone else's material. She expressed the view at page 119 that even if the evidence had established such a practice, it would not constitute reasonable grounds for concluding that there was no copyright in the plaintiff's material (and presumably also for concluding that the use constituted fair dealing).

The defendants made reference to biographies of Alanis Morissette, Sarah McLachlan and Neil Young and the use therein of quotations. These references tell one nothing, however, unless it is known whether the words of the quotations were spoken in a public forum where the individual was in a sense giving them out to all the world, whether they were spoken in a public forum but the speaker asserted a right to control their subsequent use, or whether they were said in a private interview such that the reporter could hold copyright.

Summary of Conclusions re: Copyright Infringement

I am not prepared to rely on the United States jurisprudence relating to third party quotes to which counsel for the defendants referred. The Court of Appeal made it very clear in the Tele-Direct decision that the use of United States jurisprudence in the copyright area must be approached with great care. It is well known that the history of copyright law in that country has been different from our own. For example, the United States only became a signatory to the Berne Convention in 1989, and the words of the United States constitution have always had a defining role in the development of jurisprudence in that country. Furthermore, it is not as clear as counsel seemed to suggest that the requirement of originality in that country has led to a denial of copyright by an interviewer in the words spoken by an interviewee.

I am not persuaded that the Tele-Direct decision overrules the earlier jurisprudence found in the Express Newspapers and Gould Estate cases. Also, while counsel for the defendants sought to characterize Ms. Hager's work as a compilation, it is not of that nature. The fact that she chose to present her profile of Shania Twain by using the direct quotations she elicited from Ms. Twain in the interview does not lessen its status as an original literary work. In Slumber-Magic, supra, an advertising brochure was described as a compilation of old and new materials, although it could probably also have been described as a pamphlet or "sheet of letter press."22

While the decisions in Express Newspapers and Gould Estate do not deal directly with a dispute between an interviewer and a third party who has copied the words of an interviewee, the statements in those cases that the interviewer holds the copyright are unequivocal. I consider them to state the law applicable to the circumstances of this case. The quoted words of Ms. Twain cannot be divorced from the context in which they were spoken. They were elicited by Ms. Hager in response to questions she had framed. They were not made to the public at large. She chose the parts of her interview with Shania Twain that would be incorporated into the monograph she wrote. If she had not created the work "Shania Twain: Buckskin and Cowboy Boots", the quoted words would not have been available for copying.

It was made very clear in the Slumber-Magic decision, referred to above, and in other cases, that when assessing copyright protection one must not dissect the work into fragments. It is not appropriate then to fragment Barbara Hager's work and treat the quotes as independent parts. Barbara Hager's work required each of (1) skill, (2) judgment and (3) labour for its creation.

As appears from what has been written above, I have found that the taking of parts of Ms. Hager's text constituted neither fair dealing, nor could one imply consent as a result of an alleged practice in the industry.

I conclude that Michael Holmes breached Barbara Hager's copyright in her chapter "Shania Twain: Buckskin and Cowboy Boots," when he copied parts of it into his book Shania Twain: On My Way .

Damages"Share of Profits"Remedies

That leaves for consideration a determination of the appropriate remedies.

Section 35 [as am. by S.C. 1997, c. 24, s. 20] of the Copyright Act states:

35. (1) Where a person infringes copyright, the person is liable to pay such damages to the owner of the copyright as the owner has suffered due to the infringement and, in addition to those damages, such part of the profits that the infringer has made from the infringement and that were not taken into account in calculating the damages as the court considers just.

(2) In proving profits,

Damages are difficult to quantify in this case, as they are in many copyright cases. Honour Song and On My Way are not directly competing books. Honour Song is found in book stores in the Native Studies or Canadian Studies section. On My Way is a "pop" biography. At the time that On My Way was published Ms. Hager was writing a full length biography of Shania Twain for which she was going to use the notes and tape recording of her interviews. The fact that both her book and the ECW book were in preparation was reported in The Globe and Mail in August 1997.23 Thus, both Mr. Lecker and Mr. Holmes would have known that she was writing a book about Shania Twain. Ms. Hager was delayed in producing her book because of an illness in her family. She states that she was forced to change the focus of her book and write a different type of work than had originally been planned, in light of Mr. Holmes' plagiarism of her work.

In cases where damages are difficult to assess, it is proper to make an award by assuming that there had been a reasonable fee paid by Mr. Holmes to Ms. Hager for the use of her work. Evidence demonstrated that what constitutes a reasonable fee for permission to use part of a copyright work varies depending upon the quantity that is to be used and the purpose to which it will be put. Barbara Hager's evidence was that had permission been sought she would not have given it. She considered the interview to be one of the most valuable assets of her career and she intended to use it herself. While counsel for the plaintiff argues that one cannot use the "fee assessment" approach to damages when the author asserts that permission would never have been given, I am not persuaded that the law is so categorical. As I understand the jurisprudence it is that one should not force a copyright-owner to accept a court assessed fee in lieu of an injunction. Keeping in mind the plaintiff's reluctance to allow her work to be used at all, I consider $9,000 to be a reasonable fee.

I turn then to whether the plaintiff should also be awarded a share of the defendants' profits. The record keeping by the defendants, or at least that presented to the Court, is truly abysmal. It is incomplete and has the earmarks of being deliberately confusing. Counsel on his clients' behalf, admitted to net revenues by ECW of $25,952 (from Canadian sales) and $52,373 (from sales in the United States and Europe). He then argues that expenses of $26,457.10 should be allocated against the Canadian revenues and that the revenues from non-Canadian sales should not be included in the accounting of profits because the Copyright Act does not have extraterritorial effect. Alternately, he argues that the total claimed expenses of $66,142 should be subtracted from the $78,325 revenue, leaving $13,000 profit. I frankly do not believe the revenue figure. I note that the mass market seal edition was planned for a first run of 50,000 copies. It is hard to believe that a book selling only 8,000-9,000 copies would merit a mass market edition of that size. There is evidence that at least 13,000 copies of the original book were published and that the cover price was $16.95. The percentage retained by the distributor varies with the distribution agreements: 12% or 6% for General Distribution Services, depending upon point of shipment; 27% for the U.S. distributor Login; and 40% for the European distributor Turnaround. Nevertheless, the plaintiff is required to prove revenues and thus, on the basis of the evidence before me, I am forced to accept as a starting point the admission that net revenues were $78,325. In so far as expenses are concerned, counsel for the plaintiff has agreed that the amounts of $2,410.71 for colour scanning, $27,178 for printing, $7,508.19 for photo permissions and $7,176.75 for advertising were proven and are properly deductible from the revenues. These are amounts paid to independent third parties pursuant to invoices that in most instances identify the expense as relating to the Shania Twain book. The other alleged expenses in my view have not been properly proven. This includes not only the expenses that ECW claims but also those claimed by Michael Holmes. Deducting the expenses that have been proven from the admitted revenues leaves $34,053. Ms. Hager should receive 10% of this. I have not taken into account the grants ECW receives from arts councils.

I do not accept the argument that non-Canadian revenues should not be included. The books were published in Canada, sent from Canada for sale abroad and the revenues were paid to the defendants.

A judgment will therefore issue requiring the defendants to pay the plaintiff $12,405 and the costs of her action.

1 Exhibit 4(45).

2 [S. 3 (as am. by S.C. 1997, c. 24, s. 3).]

3. (1) For the purposes of this Act, "copyright", in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

3 [S. 2 (as am. idem, s. 1).]

2. In this Act,

"infringing" means

(a) in relation to a work in which copyright subsists, any copy, including any colourable imitation, made or dealt with in contravention of this Act,

4 H. G. Fox, The Canadian Law of Copyright and Industrial Designs, 2nd ed. (Toronto: Carswell, 1967), at pp. 42-43, ftn. 110; Howard B. Abrams, "Originality and Creativity in Copyright Law" (1992), 55 Law & Contemp. Prob. 3, at p. 7.

5 Abrams, ibid, at p. 7.

6 Although H. P. Knopf, "Limits on the Nature and Scope of Copyright", in G. F. Henderson, ed., Copyright and Confidential Information Law of Canada (Scarborough, Ont.: Carswell, 1994) 229 states, at p. 241:

As more and more attempts are made to bootstrap high technology and commercial information of no particular aesthetic value into the copyright system, courts seem to be applying a higher and higher threshold of originality in order to preserve some sense of the original purpose of copyright law, which was to encourage literary, artistic, dramatic and musical creativity.

7 North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, [1994] Can. T.S. No. 2 (hereinafter NAFTA).

8 Bill H.R. 2652, Collections of Information Antipiracy Act, 2nd Sess., 105th Congress, 1998 (passed House of Representations 19 May 1998); currently under consideration in the Senate, Bill S. 2291.

9 There has been considerable debate as to whether Feist changed the pre-existing law in the United States in a dramatic fashion or merely added a minor gloss for databases. H. P. Knopf, supra, note 6, at p. 240, suggests the former. H. B. Abrams, supra, note 4, at p. 43, states that Feist constitutes a fundamental re-examination and reformulation of the concept of originality applicable to all works of authorship, but he concludes that the decision will really have little effect, even on compilations, because the creativity component can be easily satisfied. In Goldstein's Copyright, 2nd ed. (New-York: Aspen Law & Business) "2.2.1 the Feist decision is described as a "significant departure from precedent" while at the same time evidencing "an intention to immunize most classes of copyrightable works from case-by-case scrutiny for creative content." Opposing views on the merits of the Feist decision are found in David Allsebrook, "Originality is `No Sweat': Originality in the Canadian Law of Copyright" (1992), 9 Can. Intell. Prop. Rev. 270, and Norman Siebrasse, "Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada" (1994), 11 Can. Intell. Prop. Rev. 191. An analysis of the decision is also found in Pamela Samuelson, "The Originality Standard for Literary Works Under U.S. Copyright Law" (1994), 42 Am. J. Comp. L. 393.

10 An unusual case in that the same individual was the author of both books, one being a longer account of the same events mentioned in the first book. The author had assigned his copyright interest in the first book to the plaintiff. The usual indicator of copying, i.e., writing style, was thus not available to assess whether the second text was a copying of the first or an independent creation.

11 Hugues G. Richard, "Concept of Infringement in the Copyright Act" in Henderson, ed., supra , note 6, 201, at p. 217; Knopf in Henderson, ed., supra, note 6, at pp. 258-259; D. Vaver, supra para. 15, at p. 101.

12 Transcript, Vol. 2, at p. 339.

13 Exhibit 4(51).

14 Exhibit 4(52).

15 Ibid.

16 Transcript, Vol. 3, at pp. 501-502.

17 Transcript, Vol. 2, at p. 280.

18 Transcript, Vol. 2, at p. 235.

19 Transcript, Vol. 2, at p. 227.

20 Transcript, Vol. 2, at p. 239.

21 Transcript, Vol. 2, at p. 240.

22 W. L. Hayhurst, "Copyright Subject-Matter" in Henderson, ed., supra , note 6, at p. 61.

23 Exhibit 4(13).

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