Date:19990531
Docket: T-2908-94
BETWEEN:
ITAL-PRESS LTD.
Plaintiff
- and -
GIUSEPPINA SICOLI also known as Josephine Pino and
also known as Josephine Sicoli and also known as Giuseppina Pino
and all others unknown to the Plaintiff who sell, advertise
or distribute the Alberta ItalianTelephone Directory 1994,
Alberta Italian Yellow Directory Inc. and
IL NUOVO MONDO PUBLISHING INC.
Defendants
REASONS FOR JUDGMENT
GIBSON J.:
THE PLAINTIFF"S CLAIM
[1] By Amended Statement of Claim filed the 4th of February, 1998, the plaintiff claims to be the author of a literary work entitled "L"unica Guida Telefonica Italiana per L"Ovest Canada" (the "Guida") and to be the owner of copyright therein. The plaintiff claims to have updated the Guida continuously and to have published and distributed it annually for approximately twenty years. The plaintiff further claims that the defendants have infringed the plaintiff"s copyright:
| ...by reproducing and authorizing the reproduction of substantial parts of [the Guida] in a material form, namely, in a book entitled: "Alberta Italian Telephone Directory 1994" ... without the licence of the Plaintiff. |
The plaintiff further claims that the defendants have passed off the Alberta Italian Telephone Directory 1994 (the "1994 Directory") and their related advertising services as and for the Guida and the advertising services of the plaintiff. While the Amended Statement of Claim is initially directed to the 1994 Directory, the claim is extended by paragraph 4 c. to cover a further Directory allegedly published by the defendants (the "1995/96 Directory"). The two Directories are referred to collectively herein as "the Directories".
[2] The plaintiff claims that the defendants" publication was published and distributed in April of 1994 and again in "...about September of 1995".
[3] In the result, the plaintiff claims against the defendants for an injunction, damages or, alternatively, at the election of the plaintiff, an accounting of profits, delivery up of copies of the Directories, punitive damages and costs on a solicitor and his own client basis.
[4] The plaintiff claims that the defendant Giuseppina Sicoli, by whatever name known, ("Mrs. Sicoli") was at all material times a directing mind of the defendants Alberta Italian Yellow Directory Inc. and Il Nuovo Mondo Publishing Inc. (the "corporate defendants") and was deliberately, willfully, and knowingly pursuing conduct that she knew or should have known constituted infringement of the plaintiff"s copyright.
THE PARTIES
[5] The plaintiff is a corporation incorporated pursuant to the laws of the Province of British Columbia and is extra-provincially registered to carry on business pursuant to the laws of the Province of Alberta. It is owned, operated and controlled by Mr. Manlio Cupo ("Mr. Cupo") and his wife who reside in North Burnaby, British Columbia. The evidence discloses that, since the plaintiff"s incorporation in late 1973, Mr. Cupo has been the directing mind and the driving force behind it. The plaintiff is in the business of publishing, more specifically of publishing the Guida.
[6] Mrs. Sicoli is a resident of Edmonton, Alberta. Since 1977, she has been in the publishing business, having published one newspaper directed to the Alberta Italian-Canadian community since as early as 1977. She is currently in the business of publishing three such newspapers, one a weekly, one issued twice a month and the third a monthly. Also as early as 1976, and for a few years thereafter, she published Italian and Italian and Portugese telephone directories for the city of Edmonton and region and more particularly for people of Italian and Portugese descent in that city and region.
[7] The defendant Alberta Italian Yellow Directory Inc., earlier identified in the style of cause as 656501 Alberta Ltd., is a corporation incorporated pursuant to the laws of the Province of Alberta carrying on business at or near the city of Edmonton. While, on the face of the Amended Statement of Defence filed on the 31st of March, 1998, the defendants admit:
| ...that in or about March or April of 1994 and in or about September of 1995 the Defendant, 656501 Alberta Ltd. published the Italian Telephone Directory 1994 and the Alberta Italian Telephone Directory 1995/1996; |
in the next paragraph, the defendants allege that 656501 Alberta Ltd. was not incorporated until May of 1995 and was not in existence at the time of the publication of the 1994 Directory. This latter allegation is borne out by a certificate of incorporation put in evidence at the trial. Also in evidence was a certificate to the effect that 656501 Alberta Ltd. changed its name to Alberta Italian Yellow Directory Inc. on the 20th of March, 1997.
[8] The defendant Il Nuovo Mondo Publishing Inc. is a corporation incorporated pursuant to the laws of the Province of Alberta and carries on business at or near the city of Edmonton. The Amended Statement of Defence alleges that it is not entitled to any of the benefits and income or subject to any of the liabilities and expenses relating to the 1995/96 Directory and that it has no beneficial interest in or obligation whatsoever on any matter relating to the 1995/96 Directory. A certificate of incorporation of Il Nuovo Mondo Publishing Inc. was put in evidence at trial.
PRELIMINARY PROCEEDINGS
[9] On the 26th of January, 1995, an application brought by the plaintiff for an interlocutory injunction was considered by Mr. Justice Rothstein. The application was adjourned, apparently with the understanding that a draft order on consent would be submitted by the parties for the consideration of the Court. A draft order was received by the Court on the 30th of August, 1995 and was incorporated into an order made by Mr. Justice Rothstein on the 24th of September, 1995.
[10] On the basis of the terms of Mr. Justice Rothstein"s order, I am not certain that an interlocutory injunction was in fact granted in favour of the plaintiff or, rather, whether the Court simply accepted and adopted as its own the terms of Mrs. Sicoli"s earlier undertaking, dated the 23rd of January, 1995, not to take listings from the plaintiff"s Guida. Justice Rothstein"s order provided that Mrs. Sicoli, then the only named defendant, and her servants, agents and employees were directed to refrain from copying, reproducing, authorizing the copying of or reproduction of, or otherwise using in any way, the plaintiff"s Guida. Further, Mrs. Sicoli and her servants, agents and employees were directed to refrain from any activity that might lead potential advertisers to believe that they were purchasing advertising space in the Guida when they were in fact purchasing advertising space in a publication of Mrs. Sicoli, or that Mrs. Sicoli was in any way associated with the plaintiff. Finally, Mrs. Sicoli, her servants, agents and employees were directed not to publish or distribute a telephone directory with front and back cover pages which would reasonably cause users of the directory to believe that the directory and the Guida have a related or common source.
[11] Following publication of the 1995/96 Directory, on application on behalf of the plaintiff, Mrs. Sicoli was required to show cause as to why she had not contravened the order of Mr. Justice Rothstein in publishing the 1995/96 Directory. The show cause hearing was held on the 22nd and 23rd of July, 1996 by Mr. Justice Heald. Mrs. Sicoli testified before Mr. Justice Heald that, before preparation for the hearing, she had never seen the order of Justice Rothstein. This, despite the fact that her counsel had consented to the form of the order. Both Mrs. Sicoli and her son, James Sicoli ("Mr. Sicoli"), testified that all of their employees and their associates had been instructed that they were not to use the Guida in soliciting and designing advertisements for the 1995/96 Directory. Further, both Mrs. Sicoli and Mr. Sicoli testified that they did not personally copy any of the listings in the Guida in producing the 1995/96 Directory. Mr. Sicoli testified that the Guida was only used as a reference to aid in the compilation of the lists used by the defendants in the 1995/96 Directory.
[12] Justice Heald dismissed the plaintiff"s contempt application. He determined that both Mrs. Sicoli and Mr. Sicoli "...testified in a most credible and forthright manner...". He concluded that Mrs. Sicoli had no knowledge of Justice Rothstein"s order and, with respect to her undertaking on which the order was based, Justice Heald wrote in his reasons:
| After a careful review of all of the evidence in this matter, I am satisfied that Mrs. Sicoli did not breach this undertaking, either personally or through an agent or representative. The evidence established that an extensive effort was made by Mrs. Sicoli and her employees to prepare a database for the Defendant"s Directory of 1995. One can only speculate on the number of hours spent in perusing the Edmonton and Calgary telephone directories in search of names of Italian origin. These efforts were expended by Mrs. Sicoli in order to produce her own database, just as she undertook to do in her January 23, 1995, affidavit. |
| There is nothing in Mrs. Sicoli"s undertaking precluding her from utilizing the Plaintiff"s Directory as a source in the preparation of her database. Nor does Mrs. Sicoli"s undertaking preclude her from using the Defendant"s Directory of 1994 as a source. The evidence clearly established that Mrs. Sicoli or her agents did not plagiarize, copy or otherwise reproduce any of the listings in the Plaintiff"s directory. The Plaintiff"s Directory was merely consulted as a final source. The listings were not copied from the Plaintiff"s Directory into the Defendant"s Directory, rather, any number not already in the Defendant"s database was called to verify the accuracy of the information, and only then was the number added to the Defendant"s database. |
[13] Justice Heald determined that there was nothing in Mrs. Sicoli"s undertaking to preclude her from advertising for customers who already had advertisements in the Guida so long as the advertisers were contacted directly. Justice Heald accepted the testimony of Mr. Sicoli that this had in fact been the practice in soliciting advertisements for the 1995/96 Directory.
[14] Finally, Justice Heald also determined that Mrs. Sicoli"s undertaking not to reproduce or otherwise utilize advertising copy created by the plaintiff was also not breached. In so determining, Justice Heald accepted the testimony of Mr. Sicoli as to the effort that Mrs. Sicoli and her employees and associates went to ensure that the advertisements in the 1995/96 Directory differed in layout, typeset, fonts, borders and wording from the Guida.
THE TESTIMONY
| (1) ON BEHALF OF THE PLAINTIFF |
[15] The principal witness on behalf of the plaintiff was Mr. Manlio Cupo ("Mr. Cupo"). Mr. Cupo testified that he has been employed on a full-time basis by the plaintiff since its incorporation in 1973. While others, including the children of Mr. Cupo and his wife have worked for the plaintiff over the years, their work, with the exception of one full-time, relatively long-term employee, was always on a part-time basis.
[16] The plaintiff first published the Guida in 1973 and its coverage, at that time, was restricted to the lower mainland of British Columbia. Since then, the coverage of successive Guidas has been expanded. The plaintiff first published the Guida with listings for Alberta, the form of "Guida" here at issue, in 1986.
[17] The plaintiff obtained copyright registration in respect of the Guida, as a "literary work" in October of 1984, thus, before the Guida was first published with Alberta listings. A certificate of copyright registration identifies Mr. Cupo as the author, the plaintiff as the owner, and the date of first publication as January, 1974.
[18] Mr. Cupo testified at length as to the labour intensive process involved in the publication of each issue of the Guida. That process involved the assembling and checking of names of persons who appeared, by their names, to be of Italian origin, the soliciting of advertising and the designing and creation of block advertisements and the process for obtaining approval from the advertiser for block advertisements that were often designed and laid out by Mr. Cupo himself. He testified as to the elements of the Guida that made each edition distinguishable from others. Each edition highlighted a different region of Italy on the cover and by showcasing landmarks of that particular region. Mr. Cupo testified that each year he travelled to Italy to research a particular region, to take photographs, to collect recipes and to collect information on the region. He also assembled maps, tables and poems related to the region.
[19] Mr. Cupo testified that each edition of the Guida is distributed free within Italian neighbourhoods through grocery stores, shops, bakeries, meat markets and the like operated by or for Canadians of Italian descent. He testified that, at the time of trial, the circulation in Alberta of the Guida was approximately 8,000 copies per annual edition.
[20] Mr. Cupo testified as to the use of "decoy names" in each edition of the Guida, such names being names of real persons, although not people who live at the address or who are serviced by the telephone number listed for them in the Guida. The purpose of the use of these decoy names, he testified, is to provide a methodology for monitoring whether or not an edition of the Guida is being copied.
[21] Mr. Cupo testified that revenue is generated by the block advertisements that comprise a significant part of each edition of the Guida. He testified that he personally solicited advertisements, obtained contracts for advertisements, some of which contracts were in evidence at the trial, and designed and laid out advertisements, occasionally also taking photographs to be used therein. Mr. Cupo testified that the total advertising space comprised in each edition of the Guida had grown considerably over the years. He testified that, on occasion, block advertisements placed in an edition of the Guida would, at the request of the advertiser, be copied from another source, most notably, the yellow pages of a municipal telephone directory. He acknowledged that, in following this practice, he was running a risk. With regard to copying from the yellow pages, he testified that the publishers of those pages "... haven"t sued me yet."
[22] Mr. Cupo testified that, when he entered the Alberta market with the Guida in 1985 and 1986, he was not aware of the Italian and Italian/Portuguese directories for the Edmonton region that had been published by Mrs. Sicoli in the late 1970s.
[23] Mr. Cupo testified that he had been approached by Mrs. Sicoli and by Mr. Sicoli about an arrangement under which Mrs. Sicoli or other persons or corporations associated with her might sell advertising for the Guida in the Edmonton region. He testified as to a discussion with Mrs. Sicoli in which he rejected any such business arrangement. He acknowledged that he did agree to run an advertisement for Mrs. Sicoli"s newspapers in the Guida and such an advertisement was in fact published. In 1988, an acknowledgement of Mr. Cupo and the Guida was run in an issue of Mrs. Sicoli"s newspaper, Il Nuovo Mondo. Mr. Cupo denied that these arrangements amounted to a reciprocal relationship.
[24] Mr. Cupo testified that, in December of 1993, he received a "tip" that another Italian directory was being prepared for publication in Alberta. In subsequent months, he became aware of the 1994 Directory through acquaintances and friends who were contacted by persons soliciting advertising in Alberta for publication in the Directory. Some of the persons so contacted, he testified, advised him that misleading information was being spread regarding his withdrawal from the Alberta market and that some of his customers and former customers for advertising were, on the strength of that information, now going to advertise in the Directory. He testified that he found it "offensive" and "dishonest" that people in Alberta were telling his customers that he was no longer publishing the Guida in Alberta and that those persons had copied or "stolen" advertisements that he had prepared and were using them, or proposing to use them, in their Directory in Alberta.
[25] Mr. Cupo adduced in evidence two letters that he had received from advertisers in the Guida reflecting the "confusion" that he alleged had arisen in the minds of Alberta advertisers by reason of the introduction of the Directory.
[26] Two advertisers in the Guida, those who had written to Mr. Cupo to express their "confusion", testified on behalf of the plaintiff. Both testified that they had been misled by a representative or representatives of the publisher of the Directory who sold them advertising. Both had written to the publishers of the Directory to complain that they had been misled. The terminology of their letters of complaint was remarkably similar.
[27] A student at law in the office of counsel for the plaintiff also testified on behalf of the plaintiff. His testimony related to specific comparisons that he had made between certain columns of telephone listings in the 1993 Guida and the 1994 Directory. He testified that the columns examined were chosen in a random manner. He testified as to the remarkable similarity in the listings in the columns compared. While, under cross-examination, he acknowledged that 20% of the listings examined were in fact "different" in some respect, he emphasized that the differences were of a minor nature such as in punctuation and in the use of short forms for street names and, in one case, in the use of an initial and in another in the omission of a first name. Also under cross-examination, the witness acknowledged that, while he had compared columns from the 1993 Guida and the 1994 Directory, he had not done equivalent comparisons to listings in the white pages of municipal telephone books.
| (2) ON BEHALF OF THE DEFENDANTS |
[28] The principal witnesses for the defendants were Mr. Sicoli, and Mrs. Sicoli herself.
[29] Mr. Sicoli was first employed by Mrs. Sicoli, or companies that she operated or controlled, in the late 1970s. In that time period, he described himself as being employed in "advertising". In response to a question regarding his involvement in the advertising business, he testified "I was helping my mother out with it." His involvement related, he testified, to "...printed directories for Vancouver, Northern Alberta, Southern Alberta, Telephone Directories". When asked what type of directories those were, he testified "...yellow pages directories". He testified that the various telephone directories published by Mrs. Sicoli in the late 1970s ceased publication in 1978, despite the fact the they had been profitable. There was no evidence before me with respect to such directories, except for the Edmonton area.
[30] Mr. Sicoli testified that he again became involved in the businesses of Mrs. Sicoli in early 1995 when he assumed a role in the production of the 1995/96 Directory, particularly in relation to advertising. He denied any involvement in the development of the 1994 Directory. He acknowledged that, in his role in relation to the 1995/96 Directory, he had a supervisory responsibility in the compilation of the white-pages-like telephone listings. He testified at some length as to the process involved in the development of the white-pages-like telephone listings for the 1995/96 Directory and emphasized reliance on the white pages of the 1994 Edmonton city telephone directory and on other Alberta municipal telephone directories. He emphasized that one of his roles was to ensure that there was no confusion between the Guida and the Directory and, in particular, that clients who were sold advertising space in the Directory were not under the impression that they were actually buying advertising space in the Guida.
[31] Mr. Sicoli testified that an independent contractor was retained to produce a list from the Edmonton municipal telephone directory and another was retained to merge that list with the Edmonton section of the 1994 Directory for the purposes of production of the 1995/96 Directory. He testified that staff of Il Nuovo Mondo Publishing Inc. were involved in verification of the result.
[32] Mr. Sicoli testified that, in his role in soliciting and supervising the solicitation of advertising for the 1995/96 Directory, he never advised potential advertisers that he was affiliated in any way with the Guida, but rather that he was selling advertising for the Directory that was produced by a "locally owned" Alberta company, not affiliated with the British Columbia based Guida. He testified that he never advised advertisers or potential advertisers that the Guida was no longer selling or soliciting advertisements in Alberta. He further testified as to the manner of composition of advertisements printed in the 1995/96 Directory. His evidence was that only where specifically requested was an advertisement published in the 1995/96 Directory identical to that appearing in a Guida. He further testified as to his role in creating advertisements for the Directory and as to his negative opinion regarding the format of advertisements appearing in the Guida. Finally in this regard, he testified that no advertiser advised him that it was under a contract with the plaintiff or that he or the advertiser had to get permission from the plaintiff before running an advertisement in the 1995/96 Directory that also appeared in the Guida.
[33] Mr. Sicoli testified that following the contempt hearing referred to earlier in these reasons, he was instructed that neither actual listings of names, telephone numbers and addresses nor any of the advertisements that were to appear in a Directory were to be copied from a Guida. He testified that the defendants have a substantially more "streamlined" operation than the plaintiff and were therefore able to sell advertising at a lower price than that demanded by the plaintiff. He noted that overhead costs borne by the plaintiff, in particular the costs of an annual trip to Italy and the costs of essentially manually preparing lists, were much higher than costs for the Directory.
[34] Mr. Sicoli acknowledged that the defendants have taken a decision to begin publishing, presumably when this litigation is finally determined, a directory for the Vancouver area.
[35] Mr.Sicoli testified as to the use by the defendants of a CD-Rom software program to assist in the compiling of their white-pages-like lists. He implied that this process was substantially more efficient and more accurate than that adopted by the plaintiff. That being said, he testified as to the retention on contract of an employee of Edmonton Telephone (as it then was) to apparently manually go through the Edmonton white-pages and other databases to compile a list of Italian-sounding names. The result of that process was production of a very substantial list of something like 19,000 Italian-sounding names. Only 3,600 names later appeared in the Edmonton portion of the 1995/96 Directory. The process to pare the list of 19,000 names as testified to by Mr. Sicoli, did not have the ring of a very sophisticated or automated process but rather, the ring of a highly labour intensive process. He acknowledged that, in the process of reviewing the very substantial list, the Guida was consulted. In the end result, Mr. Sicoli conceded that the 1995/96 Guida may have been used as a starting point for the 1995/96 Directory. A somewhat similar process, and similarly unsophisticated process, was used with respect to the Calgary listings for the 1995/96 Directory. He acknowledged that his role in the supervision of the whole process was substantially removed from the hands-on development of the list. It was sufficiently removed that he was unable to testify how many of the "decoy listings" from the Guida showed up in the 1995/96 Directory. He expressed substantial concerns regarding the decoy lists. Despite this, no witness was called who could speak first-hand to the development of the list for the 1995/96 Directory, or to any adoption of the decoy lists.
[36] Mrs. Sicoli, also testified at some length. She first dealt with her extensive experience, since 1977, in the publishing business, including the publication of directories for people of Italian and Portuguese descent, in the Edmonton, and later the broader Alberta community. She testified that the listings for the 1994 Directory were compiled by going through the white pages of the Edmonton municipal telephone directory and highlighting names that appeared to be Italian. These highlighted names were then typed into a list which was the basis from which the 1994 Directory was prepared. Mrs. Sicoli testified at some length regarding her involvement in the publication of Italian-community-oriented newspapers and as to the interrelationship between that aspect of her business and the publication of the Directory. She testified that clearly, at the advertising level, the two enterprises are closely linked.
[37] Mrs. Sicoli testified that she first became aware of the Guida in 1986. Her version of the contact that she had with Mr. Cupo about the possibility of any form of business relationship varied substantially from the testimony given on the same subject by Mr. Cupo. She described to the Court a "friendly conversation" where the two agreed to exchange advertisements or promotional pieces at no cost. She expressed no concern regarding the use by Mr. Cupo of her lists which, she testified, he acknowledged, and that she was "happy and proud" that her newspaper subscription lists were of use to others. In contrast to the testimony of Mr. Cupo, Mrs. Sicoli testified that she never had a face to face conversation with Mr. Cupo and that, she had only ever communicated with him by telephone.
[38] Mrs. Sicoli acknowledged that she took a business decision to reenter the Italian/Canadian telephone book business in 1993 or 1994. She testified that the name the "Alberta Italian Telephone Directory" was adopted to create an identification with one of her newspapers, the "Alberta Italian Times". She acknowledged that the corporate defendants" advertised in her newspapers that the Directory was going to be republished and that those newspapers provided a contact number for any business interested in advertising in the Directory. Advertising in her newspapers and in the new Directory was solicited by the same persons. Mrs. Sicoli acknowledged a "hands-off" approach, on her part, to advertising in her publications. She acknowledged that the advertising business was handled by others.
[39] Mrs. Sicoli testified as to the laissez faire attitude, in her experience, of publishers regarding advertising copy and formats run by competitors. She expressed surprise at the copyright concerns exhibited by the plaintiff, as reflected in this litigation. She expressed the opinion that, an advertisement, once it had been created and printed, was in the public domain.
[40] With regard to the preparation of the list of names for the 1994 Directory, Mrs. Sicoli testified that she had provided a contract person with the mailing lists for her newspapers, the Edmonton white pages, the Guida, and a random collection of names that she had accumulated. She acknowledged that she did not have knowledge of the use made by her contractor of the Guida. Once again, the contractor was not called as a witness to testify as to the use, or extent of the use, of the Guida.
[41] During examinations for discovery, in a portion of her testimony that was read into evidence before me, Mrs. Sicoli conceded that the defendants had copied the Guida in producing the 1994 Directory. She stated that she "...saw after and I agree. I saw it"s same, yes." She attempted to rebut this admission during her examination and cross-examination at trial but, I conclude, without success.
[42] Additionally, on behalf of the defendants, an assistant in the office of counsel for the defendants testified as to having been given by counsel a list of names to contact. While each of the names was different, they each apparently had the same Edmonton telephone number. The witness testified that she distributed the names and the numbers to a number of other assistants in her office and then purported to testify as to the results of telephone calls made by those other assistants. All of this testimony was objected to and, I determine, quite properly. I will briefly comment on it later.
[43] The same witness testified as to an estimate of listings in the Guida and the Directory and as to an exact count of the advertisements in the two Directories. I determined this evidence to be of little or no value.
3) EVALUATION OF THE TESTIMONY
[44] In general terms, I found the testimony before me to be quite unsatisfactory.
[45] Mr. Cupo, the principal witness on behalf of the plaintiff and, for all practical intents and purposes, the plaintiff, presented as an individual who, having been long established in a business in which he had no competition, simply assumed that he had a right to continue without competition. He delayed in instituting this action, albeit that some of his delay might be attributed to his solicitor, not his current counsel. His business records were remarkably sketchy. Undoubtedly with some justification, he attributed this to a mysterious fire at his business premises. Whatever may have been the cause of the fire, those records that he was able to produce were of limited aid to his cause. The advertising contracts that he produced, on which he in part founded his claim to copyright in the block advertisements, were often incomplete. He clearly relied heavily on his position as "first in the market" and on the good faith of those with whom he dealt. He provided little documentation to support the level of "skill, judgment and labour" that went into the development of the Guidas. Similarly, I was left to rely almost entirely on his own testimony as to the view of the community to which the plaintiff"s publications were directed, regarding the identification of those publications with himself and with the plaintiff. While his annual excursions to Italy to "research" and "develop" material for the annual Guidas certainly represented a substantial investment of time, money and effort, his evidence in that regard left very much in question whether or not the same output could not have been accomplished with much less effort and expenditure through research in readily available public sources.
[46] I conclude that little if any weight can be attached to the testimony of the two advertisers in the Guidas who appeared as witnesses for the plaintiff regarding whether or not they were misled in advertising in the Directories by representations indicating that, in so doing, there were continuing to advertise in the Guidas. The evidence of the two advertisers was singularly unconvincing. The similarities between the letters that they both sent to Mr. Cupo and to the defendants tended strongly towards a conclusion that they did not act independently in expressing their concern or outrage.
[47] Finally with regard to the testimony on behalf of the plaintiff, while I found the evidence of the student at law from the office of counsel for the plaintiff to be well presented and well researched, it could hardly be said to have the quality of expert evidence that would allow me to draw broad conclusions as to copying from small samples that, in themselves, disclosed a remarkable degree of similarity between listings in the 1995 Guida and in the 1995/96 Directory.
[48] I turn then to the testimony on behalf of the defendants.
[49] The relationship between the corporate defendants remains to some extent a matter of conjecture. The lack of involvement of Alberta Italian Yellow Directory Inc. with regard to the 1994 Directory is clarified by the Certificate of Incorporation that is before the Court notwithstanding the contradictions on the face of the Amended Statement of Defence. The relationship between the two corporate defendants regarding the 1995/96 Directory remained unclear following the completion of testimony before me1. The totality of the testimony and the documentary evidence before me leads me to conclude, without a shadow of a doubt, Mrs. Sicoli is, the guiding mind behind both corporate defendants and, in addition, behind her son, James Sicoli in his role in the development and publication of the 1995/96 Directory. I can only conclude that James Sicoli was nothing more than an alter ego of his mother.
[50] With regret, unlike my colleague Mr. Justice Heald, I simply cannot conclude that Mrs. Sicoli and Mr. Sicoli, or either of them, "...testified in a most credible and forthright manner..."2 before me. To the contrary, I found Mr. Sicoli to be evasive and to only know, and therefore to be only able to testify to, that which was in the interest of the defendants. It is most noteworthy that none of those directly involved in the development of lists of names for the 1995/96 Alberta Directory came before the Court to testify while Mr. Sicoli"s testimony as to that process was at a most general level reflecting his mere "supervisory" role. With regard to his role in soliciting advertising for the 1995/96 Directory, which was clearly a more direct role, once again his testimony was of a vague and general nature, unsupported by any of those with whom he was associated or with whom he conducted business.
[51] I found the testimony of Mrs. Sicoli, to reflect arrogance, disrespect for the process of the Court and evasiveness. Like her son, she appeared to ensure that she was in a position to testify only to that which was in the interests of herself and the corporations that are co-defendants and of which I conclude that she is the directing mind.
[52] Finally, I determine the testimony of the assistant from the office of counsel for the defendants to be of no value. In important respects it was hearsay and double hearsay. In other respects, it was simply of no value and provided no basis on which I could usefully draw conclusions regarding copying or independent development of telephone listings, or regarding substantial copying of block advertisements.
[53] My concerns regarding the testimony are reflected in the following exchange that took place between the Court and counsel for the defendants during counsel"s argument:3
| THE COURT: Let me, if I could, just make one point at this stage, Mr. Goldenberg. This is a reflection on the quality of the evidence that I heard last week. |
| In general terms, quite frankly, not directed toward any particular witness, but you have made the point that relative to the "95/96 directory, Mrs. Sicoli and James Sicoli were well-aware of this action and of the fact that they had to tread carefully. |
| I find it surprising, in light of that, that a substantial paper trail would not appear to have been created to allow James Sicoli, when he came into the witness box -- or whoever else may have come to speak -- to demonstrate just exactly how thorough the process to avoid risk of being found at copying was. |
| James Sicoli"s evidence with regard to the process, I found, to be very general and substantially vague. That really quite surprised me, because he was so aware of the atmosphere in which he was working, which just sort of cried out for a paper trail to allow him to prove all the steps taken. |
| That hard evidence just wasn"t there. That is an impressionistic statement, nothing more than that. |
| MR. GOLDENBERG: No, I appreciate your comment, sir. I can only respond by saying that I filed at least two affidavits in these proceedings where it was detailed. |
| Mr. Kathol has had ample opportunity to examine on those; as well as in his examination for discovery, he asked for all sorts of details, undertakings, documents, and he has chosen not to. |
| You know, I appreciate your comments, but I also submit that -- |
| THE COURT: I made the point that it goes both ways. |
| MR. GOLDENBERG: Yes. |
| THE COURT: I could say the same with respect to some of the evidence on the plaintiff"s side. You have used the word "speculative" with regard to some of the plaintiff"s evidence with regard to copying, and I don"t disagree with that characterization. |
| MR. GOLDENBERG: Okay, sir. |
| THE COURT: The whole leaves me in a difficult position, quite frankly. |
Two affidavits sworn by Mr. Sicoli, one filed with the Court on the 20th of October, 1995 and the other on the 1st of November, 1995 were introduced as "evidence" at the trial,4 given the time constraints under which the trial was conducted. Those affidavits were introduced before the foregoing exchange took place. Having reviewed them in detail, they in no way reduce the concerns I expressed in the exchange. In fact, they heighten those concerns and, I conclude, contribute to the conclusions I have reached with regard to Mr. Sicoli"s testimony.
| 4) CRITICAL DOCUMENTARY EVIDENCE |
| a) Early Publications in the Edmonton Region |
[54] Five publications, all directed to the Edmonton Region, all related to the period 1976 to 1978/79, and in relation to which the evidence indicated that the personal defendant had a significant role, were before the Court.
[55] The first, and these and not necessarily in chronological order as to publication, is a "tumbled" publication of approximately 5 " inches by 8 inches dimension, which on one cover is entitled "Italian Telephone Directory" and on the other cover is entitled "Portuguese Telephone Directory". The cover is in two colours. The interior pages are black and white only and printed on what appears to the Court to be newsprint. In both the Italian and Portuguese portions of the Directory, there is a community directory advertisement index, a list of emergency numbers, an alphabetical white-pages-style telephone listing of advertisers and Italian, or Portuguese, sounding names, a limited number of public service advertisements and a larger number of block advertisements. In both portions of the directory, the most prominent advertisers are "Il Nuovo Mondo" the name of an Italian language newspaper published by Mrs. Sicoli at that time, and its related printing and advertising services, and Sicoli Realty Co. Ltd., a business apparently operated by Mr. Sicoli at that time. In addition, each portion of the directory contains note pages, each of which indicates "Il Nuovo Mondo Printing Dept." with an address and telephone number. Physically and in terms of its sophistication, the publication bears no relationship to the modern-day Guidas, save for its white pages listings of Italian sounding names, and a very limited number of advertisers.
[56] The second document is entitled "1976 Italian Phone Book". Its cover features its title, what would appear to be a pen and ink line sketch of a maple leaf and of a map of Italy and the words "Introduced by the Ital-Canadian Soccer Club". While in size it is similar to the Guidas, in sophistication represented by colour, quality of printing, quality of binding and quality of paper, it bears no relationship to the Guidas. The back cover is a full page advertisement for Sicoli Realtors and prominently features a photograph of Mr. Sicoli. The inside front cover is also a full page advertisement for Sicoli Realtors. The first page features a list of emergency numbers and a space for a user to insert a list of "personal numbers". The second and third pages are devoted to "support soccer" material. Those pages are followed by an alphabetized white-pages telephone listing which appears to be exclusively Italian sounding names and the names of advertisers with the addresses apparently being all in Edmonton or in communities such as Sherwood Park, St-Albert and Winterburn which I understand to have been, at that time, in close proximity to Edmonton. The white pages listings are followed by a listing of Barristers and Solicitors and physicians classified under physicians, physicians and surgeons, nose and throat and pediatrician (child disease). Following those listings is a number of pages of block advertisements. This is in contrast to the Italian/Portuguese Telephone Directory earlier described where the advertisements where scattered throughout the publication. Finally, there is a single page on which to record appointments. The inside back cover is a twelve- month calendar. While this publication is printed on what appears to the Court to be somewhat higher quality paper than the Italian/Portuguese Telephone Directory, in my unsophisticated estimate, it is, like that publication, rather "amateurish" in all of its features.
[57] The third publication from this era is entitled "Guida Telefonica 1977 Italiana 1977". Like the 1976 Italian Phone Book, it is of the same size as the Guidas. While it is not in colour, it has the appearance of being somewhat more sophisticated than the just described publications in its printing and binding and in the quality of paper used. The cover features a photograph of a fountain and/or garden or courtyard in what well could be Italy. Both the inside front cover and the back cover are full page advertisements for Sicoli Realtors. The first page features emergency numbers and a space to record personal numbers in a form identical to that in the 1976 Italian Phone Book. Also like that book, pages 2 and 3 are devoted entirely to "support soccer" material. Once again, this directory or Guida Telefonica features an extensive alphabetized list of Italian sounding names and addresses and telephone numbers in Edmonton. Block advertisements are interspersed throughout the pages of telephone listings. The Edmonton listings are followed by a one page list of barristers and solicitors, physicians, physicians and surgeons and pediatricians (child disease). There then follows very brief alphabetized white-pages style listings of Italian sounding names and related addresses and telephone numbers for the communities of Ardrossan, Devon, Ellerslie, Fort Saskatchewan, Leduc, St-Albert and Sherwood Park with a single listing for Spruce Grove. Following those listings is a single page of information relating to Italy and Canada. The inside back cover is a repetition of the last page of the 1976 Italian Phone Book providing space to record appointments.
[58] No publisher is identified for either the 1976 Italian Phone Book or the Guida Telefonica 1977 Italiana 1977.
[59] The fourth publication in this series, once again in approximately the same size as the Guida, is entitled "Yellow Directory of Canada Ltd. 1978-79 Northern Edition". It features a colour cover consisting entirely of what would appear to be an aerial photograph taken in the Edmonton Region. The publication is printed in black on yellow paper, apparently equivalent to the paper used for the yellow pages of current municipal directories. The first page indicates the communities covered and features a line map of the Province of Alberta which would appear to indicate that the communities covered are in each case all communities north of a line drawn just south of Red Deer, Alberta. The same page included the following inscription:
| Published by Yellow Directory of Canada ltd., #206 - 15205 Stony Plain Road, Edmonton, Phone: 483-4151; registered in Alberta, Saskatchewan, Manitoba and Quebec. |
| Yellow Directory of Canada Ltd. is an independent publisher of Yellow Page advertising and is in no way connected with any public utility. "Support Free Enterprise", use the Yellow Directory. |
| The listings and/or solicited advertising in this directory has been prepared from the best information obtainable by Yellow Directory of Canada Ltd. Every precaution has been taken to avoid errors in names, addresses, phone numbers or omissions of part or whole of any listing or ad. The Company, however, shall not be liable for damages arising from such error omissions. In case of listings for which a specific charge applies, the Company"s liability shall be limited to refunding in part or whole, the charge for such listings depending on the degree of the error or omission, but in no way shall the liability exceed the total paid amount of the listing. |
[60] The foregoing is followed by a copyright symbol and an indication that the copyright is effective 1978 and is owned by Yellow Directory of Canada Ltd.
[61] The inside front cover and both sides of the back cover are colour advertisements. The rest of the publication is typical yellow pages listings with block advertisements scattered throughout. There is nothing whatsoever to indicate that this publication is directed exclusively and primarily to the Italian-Canadian community.
[62] The fifth and final publication in this series is approximately 6 inches by 9 inches in size and, like the first publication described, is in tumble form. Both covers feature the same aerial photograph of what would appear to be a portion of downtown Edmonton. One cover is entitled "Italian Yellow Telephone Directory (effective date August 15, 1978)." The other cover is entitled "Portuguese Yellow Telephone Directory (effective date August 15, 1978)". The inside cover of the Italian portion is a full colour advertisement. The inside cover of the Portuguese portion is the same aerial photograph that appears on the cover of the Yellow Directory of Canada Ltd. 1978-79 Northern Edition. Superimposed on that photograph is the following notice:
| All rights reserved. |
| This Directory known as the Italian/Portuguese Yellow Directory may not be reproduced in whole or in part without the express permission of the Yellow Directory of Canada Ltd., #206 - 15205 - Stony Plain Rd., Edmonton (403)483-4151- (403) 474-0443. Registered in Alberta, Saskatchewan, Manitoba and Quebec. |
[63] While this publication is printed on yellow paper, it consists primarily of a white pages alphabetized listing of Italian in one half and Portuguese in the other half names with related addresses and telephone numbers, interspersed with the names of advertisers, their addresses and telephone numbers, also in alphabetical order and further interspersed with block advertisements. In addition, both portions of the Directory include, following the listings, a significant number of pages of public service information.
[64] During her testimony, Mrs. Sicoli, when shown the first and last of the above described publications, that is to say the two Italian/Portuguese directories, testified "they are my directories". Impliedly at least, she acknowledged that she, and Mrs. Sicoli in her testimony did not appear to distinguish between herself and companies that she controlled, published the two publications. The testimony, taken as a whole, would indicate that Mrs. Sicoli, directly or indirectly, was involved in the publication of all of the foregoing documents.
| b) The Guidas in General |
[65] As indicated earlier in these reasons, the plaintiff first published the Guida in 1973. At that time, its coverage was restricted to the lower mainland of British Columbia. On October 15, 1984, the plaintiff registered copyright in a literary work entitled "Italian Telephone Directory/Guida Telefonica Italiana". Mr. Cupo was registered as the author of the Guida.
[66] The first Guida that was before me in evidence was Volume 12 for the year 1986. It is a much more substantial document than any of the documents described to this point in these reasons. It runs to 320 pages. It is approximately 8 inches by 11 inches in size. The upper portion, and by far the greater proportion of the front cover, is a full colour photograph entitled, in the inscription that appears under it, " The "Dome of Orvieto" (Umbria)". Across the bottom of the front cover there appears a small depiction of what I take to be a site at the 1986 Vancouver World Exposition overlaid with the inscription "Visit the World Exposition May 2 to Oct. 13", a depiction of the Italian and Canadian flags and the following words "L"unica Guida Telefonica Italiana per l"Ovest Canada, Edita Dall"Ital Press Ltd. The Only Italian Telephone Directory for Western Canada published by Ital Press Ltd. 3895 East Hastings, North Burnaby, B.C. Telephone: 294-6621 or 299-7185, Vol. 12". The spine of the volume is in white and has the following inscription in red: "Guida Telefonica Italiana 1986 Italian Telephone Directory 1986".
[67] On the inside front cover, in addition to a copyright symbol and the words "Copyright, Canada, by Ital-Press Ltd.", a commercial advertisement, an inscription in Italian which would appear to be related to how to get more information regarding the Guida and an invitation to telephone one of the Ital Press telephone lines to obtain "Italian mailing list with Postal Codes for direct mailing to any area in British Columbia", there appears, also in Italian, a brief index to the Guida.
[68] The index indicates that the Guida includes:
| ["] a list of communities in British Columbia together with their populations; |
| ["] a listing of Italian-Canadian societies in the Greater Vancouver area with an indication of their presidents, their addresses, their telephone numbers and their area codes; |
| ["] a calendar for 1986 and 1987; |
| ["] alphabetized white page listings of essentially Italian sounding names and commercial listings for the lower mainland of British Columbia running from page 50 to page 176, similar listings for other British Columbia and Yukon communities running from page 190 to page 236, similar listings for Calgary running from page 237 to page 251, similar listings for smaller southern Alberta communities on page 251 and similar listings for Edmonton and smaller northern Alberta communities running from pages 255 to 269; |
| ["] a one-page description of the climate in 20 separate regions of Italy; |
| ["] a 14 page listing of communities in Italy with their postal codes and telephone area codes; |
| ["] 2 pages of sayings or proverbs in the Italian language; |
| ["] something on page 50 that I am unable to identify; |
| ["] emergency numbers for 21 communities in the lower mainland of British Columbia and on separate pages, for a wide range of communities in the rest of British Columbia; |
| ["] 16 pages of recipes under the heading "Italian Gastronomy - The World"s Mother Cuisine"; |
| ["] a 3 page index of advertisers alphabetized under headings indicating the nature of their businesses; |
| ["] a single page listing of items under the heading "Indovinelli" all in Italian and all of which I am unable to decipher; |
| ["] a further one page index of advertisers in purely alphabetical order; |
| ["] an alphabetized list of communities in British Columbia and Alberta for which white page telephone listings are provided; |
| ["] a multi-coloured detailed full page map of Italy under the heading "Italia Nostra" with the inscription across the bottom of the page "friends for life - the Canadian Red Cross Society" with the Red Cross symbol; |
| ["] a listing of area codes for all of Canada together with a line map of North America indicating the time zones for the continent; |
["] a listing of area codes for the United States together with a list of the presidents and the dates when they occupied the office from 1789 to 1986;
["] a listings of area codes for the rest of the world;
| ["] a listing of professionals, of public services and community services for the lower mainland of British Columbia; |
| ["] a separate full range of public service listings for the city of Vancouver; |
| ["] finally as disclosed from the index, is a listing of 20 regions of Italy and of basic statistics with respect to each of those regions. |
[1] While the foregoing describes the contents of the 1986 Guida as outlined in the index, it is not a complete description. The first page displays a picture of Mr. Cupo and includes a message from him. He describes himself as the editor of the Guida. There are extensive block advertisements throughout the publication, some of which are in full colour. There are also public service messages, for example, related to "The United Way", "Expo 86" and "The Heart Fund". There is also poetry in the Italian language with attributions, apparently to the authors. A further notice regarding Italian mailing lists with postal codes for direct mailing to any area in British Columbia appears at page 87, once again with a telephone number that is one of the numbers of Ital-Press Ltd. While the inside back cover is a full page black and white advertisement with an indication at the foot of the page consisting of two copyrights symbols and the notations "Copyright 1986" and "Copyright, Canada, by Ital-Press Ltd., the back of the volume is a sophisticated full page full colour advertisement.
[2] The Guida conveys a sense of a much more sophisticated and much more comprehensive publication then any of the Edmonton region and Northern Alberta publications from the 1976 to 1978 era.
[3] While the Guida evolved over the years from the description above of Volume 12 for 1986, it remained remarkably recognizable. While the cover photograph was different annually up to 1998, Volume 24, it remained constant as a photograph of a landmark in Italy. The inside front cover continued to provide an index with most of the same elements, albeit that the index became somewhat more general. The inside front cover continued to display the international copyright symbol and the designation "Copyright, Canada by Ital-Press Ltd." The layout remained the same with features, public service and informational elements and block advertisements scattered throughout the volume. Both the cover material and the page material remained of what appears, to the Court at least, to be high quality material. The print remained remarkably readable for its size and the quality of the printing of the advertisements also remained high. In the 1995 Guida, though not the 1993 version, Mr. Cupo, as editor, continued to receive pride of place with a photograph and a message at the front of the volume.
| c) The Alberta Directories |
[4] The first version of the Directory complained of in these proceedings appeared in the spring of 1994. It is of essentially the same size as the 1993 Guida with a full cover photo, in colour, of an historic site in Italy. The cover page lacks an identification of the site. Similarly, it lacks the distinctive black band across the bottom of the cover that continued to be a feature of the Guida. In place of the black band on which the Guida displayed depictions of the Italian and Canadian flags, the title of the publication and name of the publisher and its address, as well as the volume number, the directory has a light coloured banner across the upper left corner of the cover with depictions of the Italian and Canadian flags and the words "Alberta Italian Telephone Directory 1994". In the upper right hand corner, in black, appears a symbol of a telephone and an open directory and the following:
| Voice from multiculturalism serving your community 1- 800 - 661- 5935 - 472 - 6397 - 473 - 8136 - fax - 478 - 5493. |
The spine of the 1994 Directory is black on white with the designation "Alberta Italian Directory 1994" and no equivalent in Italian. The Directory extends to 192 pages while the 1993 Guida consists of 320 pages. The paper appears to the Court to be of somewhat lesser quality than that used for the 1993 Guida and the alphabetical listings appear in larger print, two columns to a page, as opposed to the smaller print in the Guida with three columns to a page.
[5] The inside cover of the 1994 Directory is a full page colour advertisement. Other features of the Directory are the following:
| ["] facing the inside cover, the first page, is a letter from the vice-consul of Italy at Edmonton; |
| ["] page 2 provides emergency numbers; |
| ["] page 3 consists of three photographs, one of which the Court concludes is a photograph of Mrs. Sicoli, the other two of which are photographs of young children; |
| ["] under the three photographs, a message from Giuseppina Sicoli appears in Italian; |
| ["] page 4 provides telephone area codes for Canada and equivalent codes for the United States appear, partly also on that page and on pages 6, 8 and 9; |
| ["] pages 4, 6, 8 and 9 also feature block advertisements in black and white and one colour; |
| ["] page 5 contains two notes, entirely in Italian, both of which appear to be letters of congratulations on the publication on the new Alberta Italian Directory; |
| ["] the upper portions of pages 10 and 11 provide selected international dialling codes. |
| ["] the balance of those pages are once again devoted to block advertisements in black and white and one colour; |
| ["] pages 14 and 15 provide distances by air, in kilometres, between urban centres in Canada and other locations in Canada. |
| ["] equivalent road distances appear at pages 18 and 19; |
| ["] names of Italian associations and clubs of Edmonton together with names of principal officers and telephone numbers appear at pages 21 to 25; |
["] pages 26 and 27 provide information regarding major airports in Italy;
| ["] pages 28 through 31, while primarily dedicated to block advertisements, also provide Italian direct dialling telephone codes; |
| ["] pages 32 to 35 provide road distances in kilometres between urban centres in Italy. |
| ["] to this point, where no description is provided for a page, the page features block advertisements; |
| ["] telephone listings, alphabetically arranged and restricted to Italian sounding names, commence on page 37 and continue, with block advertisements interspersed, to page 95 for what would appear to be Edmonton and its immediate vicinity; |
| ["] smaller communities in Northern Alberta are listed in equivalent form with the communities themselves listed alphabetically commencing at page 96 and continuing to page 112; |
| ["] only one block advertisement appears in this portion of the directory; |
| ["] Calgary listings commence at page 113, once again with block advertisements; |
| ["] starting at page 165, listings for smaller communities in Southern Alberta appear and continue to page 181 with no block advertisements interspersed; |
| ["] until the last page of the Directory, the balance of the pages are devoted to prose in Italian, very brief selections of poetry in Italian, block advertisements and tables of measurement; |
| ["] the final page is a directory of advertisers; and |
| ["] finally, both the back cover and the inside back cover are full page, full colour advertisements. |
[1] No publisher or printer is identified in the 1994 Directory and no copyright claim or copyright symbol appears anywhere.
[2] The second edition of the Alberta Italian Telephone Directory, for 1995/96, was published in the autumn of 1995. The form of the cover is fairly dramatically changed from that of the 1994 Directory though it continues to feature a full colour photograph of an historic site in Italy, representations of the Italian and Canadian flags and the same text, albeit with the year designation changed, as appears on the cover of the 1994 Directory. The 1995/96 Directory is identical in size to the 1994 Directory and the spine, once again in black and white, identifies the volume as "Alberta Italian Directory 1995-1996".
[3] The 1995/96 Directory pages are not numbered consecutively. The inside front cover is once again a full page advertisement with some colour. The first page features a half page colour photograph of Edmonton, emergency numbers, and the following two notations:
| Alberta"s Italian Telephone Directory. Funds from Alberta staying in Alberta (403 -472 - 6397); and Alberta Italian Telephone Directory is a wholly owned subsidiary of 656501 Alberta Ltd. For inquiries on advertising call (403)472-6397 or fax (403)478-5493. |
[4] Other features of the 1995/96 Directory are the following:
| - Edmonton alphabetical telephone listings commence on page 1 and continue to page 108 with block advertisements interspersed; |
| - a directory of advertisers appears at page 110 and, interestingly enough, Il Nuovo Mondo, Alberta Italian Times and other publications associated with Mrs. Sicoli are not listed as advertisers. |
| - I will return to this point shortly; |
| - poetry in the Italian language together with illustrations appears at pages 111 and 112; |
| - City of Calgary emergency numbers, City of Calgary Public Service numbers, a rural emergency number and other Calgary related emergency numbers appear at page 1 of the Calgary section together with a line map of the city of Calgary without much detail; |
| - an unattributed block appears at page 2 with poetry in English and Italian and a reproduction of a photograph of a child; |
| - a message from the Premier of the Province appears at page 3; |
| - reproductions of letters from Charles Caccia, a member of the House of Commons who signs in the signature block "Carletto Caccia", and from the Italian ambassador at Ottawa, those letters being in Italian, appear at pages 4 and 5; |
| - a further letter in Italian, this from Angezia Di Stampa Internzionale in Rome appears at page 6; |
| - Calgary listings commence at page 7 and continue to page 91, as usual, with block advertisements interspersed; |
| - also interspersed at page 8 of the Calgary portion of the directory is a letter from a professor in the romance language department of the Faculty of Arts of the University of Alberta and at page 10, is a half page article in Italian with a related illustration and with the other half of that page being devoted to a graph and information regarding "the ten most valuable Italian corporations"; |
| - following the Calgary listings there is a full page of road signs and equivalent signs that are symbols or pictures only with an invitation to match descriptive terms to the appropriate symbols; |
| - once again, on unnumbered pages, there follows a one page chart of automobile mileages between centres in Canada, a half page chart of average monthly temperature in world cities, a one quarter page article on why the metric system is being increasingly adopted with the balance of that half page devoted to "conversion factors", and four half page charts on Fahrenheit to Celsius conversions, time differences in foreign cities and air route mileage around the world. |
[1] As with the 1994 Directory, no claim to copyright is asserted and no copyright symbol appears in the 1995/96 Directory.
[2] As indicated earlier, a directory of advertisers in the 1995/96 Directory does not identify any of the corporations or publications with which Mrs. Sicoli is associated as advertisers. My review of the 1995/96 Directory indicates that at least eleven (11) advertisements or other publicity notices appear for the Directory itself, fourteen (14) pieces appear for Il Nuovo Mondo, four (4) for Alberta Italian Times and two (2) for Italian Link. One piece appears for Alberta Italian Yellow Directory Inc., referenced by its earlier name 656501 Alberta Ltd., and one of Il Nuovo Mondo Publishing Inc. Several of these pieces are worthy of note:
| - at page 2 of the Edmonton section, in an advertisement for the Directory, Mrs. Sicoli is identified as "Chief Administrator". The same identification of Mrs. Sicoli appears at page 11 of the Calgary section. Interestingly enough, the latter advertisement lists four (4) persons, including Mrs. Sicoli under the heading "Staff of The Italian Telephone Directory". Mr. Sicoli is not among them; |
| - at page 1 of the Calgary section, the Directory is once again identified as "a wholly owned subsidiary of 656501 Alberta Ltd."; |
| - at page 3 of the Calgary section, the Directory is once again identified as "...a wholly subsidiary of 656501 Alberta Ltd." and it is indicated to be published "...under the supervision of Il Nuovo Mondo Publishing Inc. and Josephine Sicoli"; |
| - at page 5 of the Calgary section, the following appears: |
| Il Nuovo Mondo Publishing is the largest publisher of Italian news in Western Canada since 1977. The Alberta Italian Telephone Directory is 100% owned and operated. |
ISSUES
[1] The issues arising in this action can be summarized as follows:
| 1) COPYRIGHT ISSUES |
| a) Is there copyright in the 1993 and 1995 Guidas or in any elements of those Guidas? |
| b) If there is copyright in the 1993 and 1995 Guidas, or elements thereof, who owns it? |
| c) If the plaintiff is the "owner" of the copyright in the 1993 and 1995 Guidas, or elements thereof, has there been copying such as to constitute infringement of the plaintiff"s copyright? |
| 2) PASSING OFF |
| a) Does this Court have jurisdiction, on the facts of this matter, to entertain a claim for passing off either pursuant to the Trademarks Act5 or at common law? |
| b) If this Court has jurisdiction, has passing-off been established? |
| 3) REMEDIES |
| a) A permanent injunction |
| b) Damages and/or profits |
| c) Delivery up |
| d) Punitive damages |
RELEVANT PROVISIONS OF THE COPYRIGHT ACT6
[2] Relevant provisions of the Copyright Act, as it read at the time of publication of the 1993 Guida in the Spring of 1993, appear in Appendix A.
[3] Effective January 1, 1994, a definition "compilation" was added to section 2 of the Act7, that definition reads as follows:
| "compilation" means (a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or (b) a work resulting from the selection or arrangement of data; |
"_compilation_" Les oeuvres résultant du choix ou de l'arrangement de tout ou partie d'oeuvres littéraires, dramatiques, musicales ou artistiques ou de données. |
No other amendments to the Copyright Act relevant to the facts of this matter came into force after the Spring of 1993 and to the time of publication of the 1995/96 Directory.
ANALYSIS
| 1) INTRODUCTION |
[4] By subsection 5(1) of the Copyright Act, copyright subsists in every original literary, dramatic, musical and artistic work where certain other conditions, not at issue in this matter, are met.
[5] On the facts of this matter, two initial questions follow: first, are the 1993 and 1995 Guidas "...literary, dramatic, musical [or] artistic work[s]", are the elements of those Guidas comprised of the telephone listings and the block advertisements such works and is each of the block advertisements such a work; and, second, if any of them are, are those that are such works "original".
[6] As will be seen from the extracts from the Copyright Act as it read in the spring of 1993 that are contained in the Appendix, "literary work" was defined to include "compilations". The Guidas and the elements of the Guidas to which I have referred are certainly not dramatic or musical works. Counsel for the plaintiff argued that each of the block advertisements was an artistic work and that the block advertisements, taken as a whole, are a compilation of artistic works. The definition "artistic work" does not include a reference to compilations.
[7] As noted earlier in these reasons, a definition "compilation" was added to the Copyright Act effective January 1, 1994. Of particular note for this matter, "compilation" was defined to include, among other things, a work resulting from the selection or arrangement of data and a work resulting from the selection or arrangement of artistic works.
[8] In Tele-Direct (Publications) Inc. v. American Business Information, Inc.8, (hereinafter, "Tele-Direct"), Mr. Justice Décary, for the Court, wrote at pages 32-33:
| All in all, ... I have come to the conclusion that the 1993 amendments [the amendments adding the definition "compilation"] did not alter the state of the law of copyright with respect to compilations of data. The amendments simply reinforce in clear terms what the state of law was, or ought to have been: the selection or arrangement of data only results in a protected compilation if the end result qualifies as an original intellectual creation. I shall therefore, as have counsel and the Trial Judge, use the post-1993 amendments terminology as if it had applied throughout the year at issue in these proceedings. |
[9] I adopt the foregoing for the purposes of this matter. Indeed, I extend the conclusion of Décary J. to compilations that are selections or arrangements of artistic works.
[10] What then are the 1993 and 1995 Guidas?
[11] On the basis of the analysis appearing earlier in these reasons of the content of the Guidas, I am satisfied that they are literary works that are compilations of literary works, artistic works and data. The white pages listings that are the central feature of the Guidas are a subcompilation that is a work resulting from the selection or arrangement of data. As such, I am satisfied that the listings are literary works within the broader literary works that constitute the Guidas.
[12] The block advertisements, which constitute the second largest component of the Guidas, and which are the source of revenue that supports the publishing of the Guidas, are, I am satisfied, compilations of artistic works, albeit that they are scattered throughout the Guidas. As such, they themselves constitute literary works within the broader literary works that are the Guidas.
[13] In Tele-Direct, Mr. Justice Décary at page 27 defined the main issue before the Court in the following terms:
| The main issue in this appeal is whether copyright subsists in the compilation of information contained in Yellow Pages directories ... published by Tele-Direct (Publications) Inc. ... .American Business Information, Inc. (the respondent) has conceded that the Yellow Pages, when taken as a whole and given the visual aspects of the pages and their arrangement, enjoy the protection of copyright. |
[14] Essentially the same issue arises here in respect of the Guidas as a whole, the white pages listings and the block advertisements. No concession has here been made on behalf of the defendant that the Guidas, the white pages listings or the block advertisements "... enjoy the protection of copyright."
[15] On the "main issue" as above described in Tele-Direct , Mr. Justice Décary wrote at page 27 to 29:
| On the main issue, the Trial Judge held that the principles to be applied in determining the extent to which copyright exists in a compilation are those outlined by McLachlin J. (as she then was) in Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., [1985] 1 W.W.R. 112 (B.C.S.C.), at pages 115-116: |
| The defendants suggest that there is no copyright in the brochure because it used ideas and elements which are also found in the brochures of other competitors. That, however, does not defeat a claim for copyright. It is well established that compilations of material produced by others may be protected by copyright, provided that the arrangement of the elements taken from other sources is the product of the plaintiff"s thought, selection and work. It is not the several components that are the subject of the copyright, but the overall arrangement of them which the plaintiff through his industry has produced. The basis of copyright is the originality of the work in question. So long as work, taste and discretion have entered into the composition, that originality is established. In the case of compilation, the originality requisite to copyright is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. Ladbroke (Football), Ltd. v. William Hill (Football), Ltd. [1964] 1 All E.R. 465 (H.L.). Where copyright is claimed in a compilation it is not the correct approach to dissect the work in fragments and, if the fragments are not entitled to copyright, then deduce that the whole compilation is not so entitled; rather, the court should canvass the degree of industry, skill or judgment which has gone into the overall arrangement: Ladbroke, supra. See also T.J. Moore Co. ltd. v. Accessories du [sic] Bureau de Quebec Inc. (1973), 14 C.P.C. (2d) 113 (Fed. Ct. T.D.); Jarrold v. Houlston (1857), 3 K & J. 708, 69 E.R. 1294 (Ch. Div); MacMillan & Co. Ltd. v. Cooper (1923), 40 T.L.R. 186 (P.C.) |
| The proposition that arrangements of common ideas may be copyright is subject to certain limitations. First, it appears that the compiler can claim no copyright unless he or she had a right to use the materials constituting his compilation: T.J. Moore Co Ltd. v. Accessoires de Bureau de Quebec Inc., supra, at p. 116. Secondly, in so far as component ideas may be in the public domain, they themselves may be copied with impunity, without breaching the compiler"s copyright, which rests not in the components, but in the overall arrangement: Fox, Canadian Law of Copyright and Industrial Designs , 2nd ed. (1967), p. 118. |
| The Trial Judge went on to conclude as follows: |
| In conclusion, Tele-Direct arranged its information the vast majority of which is not subject to copyright, according to accepted, commonplace standards of selection in the industry. In doing so, it exercised only a minimal degree of skill, judgment or labour in its overall arrangement which is insufficient to support a claim of originality in the compilation so as to warrant copyright protection. In my opinion, the defendant has successfully displaced the presumption in favour of copyright created by paragraph 34(3)(a) of the Act. |
| I find no error in that conclusion. |
| 2) THE SUBSISTENCE OF COPYRIGHT |
| a) The Guidas as a Whole |
[16] In Ladbroke (Football) Ltd. v. William Hill (Football), Ltd.9, Lord Reid wrote:
| ...the more correct approach is first to determine whether the plaintiff"s work as a whole is "original" and protected by copyright, and then to enquire whether the part taken by the defendant is substantial. |
| A wrong result can easily be reached if one begins by dissecting the plaintiff"s work and asking could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognized that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright. |
[17] In Tele-Direct, Mr. Justice Décary, after quoting the foregoing in a broader context, noted that Lord Reid did not qualify the suggested approach as the only correct one, but as the more correct approach. Mr. Justice Décary went on to comment at page 34:
| There may be cases where the more correct approach will not be suitable. |
[18] I am satisfied the "more correct approach" is here suitable but that it may not be sufficient unto itself.
[19] Once again in Tele-Direct, Mr. Justice Décary wrote at page 36:
| Essentially, for a compilation of data to be original, it must be a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement. The threshold is low, but it does exist. If it were otherwise, all types of selections or arrangements would automatically qualify, for they all imply some degree of intellectual effort, and yet the Act is clear: only those works which are original are protected. There can therefore be compilations that do not meet the test. |
[20] I am satisfied that the foregoing is equally true of compilations that, as in the case of the Guidas, are partially of data and partially of other elements.
[21] In argument with respect to copyright in the Guidas as a whole, counsel for the defendants stated10:
| Sir, it is an arrangement that, on the one hand, one would think by looking at the book that there would be copyright, because there is clearly skill, and there was judgment used in its creation. |
| But at the same time, I state that if we take ten articles, nine of which, for example, do not have copyright in them and put them together into a compilation, it is not logical, in my mind, that all of a sudden we have created some form of copyright protection which would not exist individually. |
[22] With great respect, I am satisfied that counsel was inviting me to commence my analysis with an approach that is not "the more correct approach" described by Lord Reid. At the same time, I regard the foregoing representations as significant because of the acknowledgement that there was skill and judgment used in the creation of the Guidas. I share that view. The Guidas are not "garden-variety" telephone books, whether those telephone books be white pages books, yellow pages books or books comprised of both white pages and yellow pages components. They are not directed to all telephone users. They are directed to a very well defined segment of that class. Nor are they directed to all yellow pages users. They are directed, once again, to a very selected segment of the market, that segment being shops, stores and services catering particularly to the Italian/Canadian community. In addition to the listings and block advertisements, the range of other components comprised in the Guidas is also specifically tailored to the same community.
[23] I have, to this point, focussed briefly on skill and judgment. I harbour no doubt whatsoever that, based upon the testimony of Mr. Cupo, substantial labour was involved in the production of the Guidas.
[24] Counsel for the defendants relied heavily on the following quotation from Slumber-Magic Adjustable Bed Co. Ltd. v. Sleep-King Adjustable Bed Co., and Todd11, ("Slumber-Magic") cited in a quotation from Tele-Direct appearing above:
| First, it appears that the compiler can claim no copyright unless he or she has a right to use the materials constituting his compilation; T.J. Moore Co. Ltd. v. Accessoires du [sic] Bureau de Quebec Inc., at p. 116. |
[25] In commenting on the foregoing proposition, Madame Justice McLachlin wrote, also at page 116:
| The evidence does not establish that the brochure contained material which the plaintiff had no right to use. |
[26] While before me, evidence and argument on behalf of the defendants implied that the plaintiff incorporated into the Guidas "...material which the plaintiff had no right to use...", I am satisfied that such evidence was, at best, inconclusive. In light of the terms of subsection 34(3) of the Copyright Act , there was no onus on the plaintiff to establish its right to use all of the materials constituting its compilation that are the Guidas.
[27] I am satisfied that the Guidas are sufficiently original in relation to the directories published for the Edmonton region in the 1976 to 1978 period to support copyright in the Guidas. This conclusion is based upon the relatively detailed analysis of the content of the 1976 to 1978 directories, and of the Guidas, that appears earlier in these reasons.
[28] For the foregoing reasons, I am satisfied that there is copyright in the Guidas. I have reached this conclusion without taking into account the certificate of registration of copyright for the "Italian Telephone Directory/Guida Telefonica Italiana" that was issued to the plaintiff on the 1st of November, 1995 and subsection 53(2) of the Copyright Act. The copyright registration in question was effected on the 15th of October, 1984. No copy of a Guida for 1984 or for prior years was before the Court. In the circumstances, I am simply not satisfied that the benefits accorded to registration by subsection 53(2) can be accorded to the Guidas here at issue.
| b) The Telephone Listings |
[29] In Feist Publications, Inc. v. Rural Telephone Service Co., Inc.,12 Madame Justice
O"Connor wrote:
| The question that remains is whether Rural selected, coordinated or arranged these uncopyrightable facts in an original way. As mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is equally true, however, that the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever. The standard of originality is low, but it does exist. |
| ... |
| The selection, coordination, and arrangement of Rural"s white pages do not satisfy the minimum constitutional standards for copyright protection. As mentioned at the outset, Rural"s white pages are entirely typical. Persons desiring telephone service in Rural"s service area fill out an application and Rural issues them a telephone number. In preparing its white pages, Rural simply takes the data provided by its subscribers and lists it alphabetically by surname. The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity. |
| Rural"s selection of listings could not be more obvious: It publishes the most basic information -- name, town, and telephone number -- about each person who applies to it for telephone service. This is "selection" of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient effort to make the white pages directory useful, but insufficient creativity to make it original. |
The second, third and fourth sentences of the first paragraph of the foregoing quotation were quoted by Mr. Justice Décary in Tele-Direct. He followed the quoted portion with the following words at page 39:
| These words, in my view, could have been said in the Canadian context. |
I am satisfied that the whole of the foregoing could have been said in a Canadian context and in relation to a "garden-variety" white pages directory. This, despite the fact that United States caselaw on the subject matter of copyright must be treated with caution.13
[30] The issue here then, in colloquial terms, but terms from Feist that I find attractively descriptive, is, if the telephone listings comprising a component of the Guidas are compilations, and I am satisfied that they are, are they "...garden-variety white pages director[ies], devoid of even the slightest trace of creativity"? I think not.
[31] Mr. Cupo testified at length as to the process that he, together with the support of others working for the plaintiff, engaged in to select names for the Guidas, to verify names, addresses and telephone numbers and to compile the listings. The chief distinguishing feature of the listings in the Guidas is that they are all names of Canadian residents of Italian origin or residents who can reasonably be thought to be of Italian origin. Thus, there was a selection process involving elements of skills and judgment as well as labour. By contrast with the white pages described in the foregoing quotation from Feist, the white pages listings in the Guidas were not "entirely typical". They were not listings of all persons, in a particular geographical area, desiring telephone service. The plaintiff did not simply take the data provided by subscribers and list that data alphabetically by surname. In the result, I am satisfied that the end product was not a "garden-variety white pages directory, devoid of even the slightest trace of creativity." The process involved skill, judgment and labour. That the skill and judgment involved might not have been of a high order is, I am satisfied, of no account. It was sufficient to provide originality in the resulting literary work.
[32] My conclusion in this regard is borne out by testimony on behalf of the defendants that went to a description of the process that the defendants allegedly engaged in to create equivalent lists for their Directories, or at least the 1995/96 Directory.
[33] My conclusion with regard to subsistence of copyright in telephone listings for a particular community within a larger community, based on the origin of the members of the particular community, would appear to be consistent with the conclusion of Mr. Justice Yates of the Ontario High Court of Justice in Millionis v. Petropoulos13 although there the telephone directory in which copyright was claimed would appear to have consisted of a white pages component and a yellow pages component, both directed to the Greek community in the Metropolitan Toronto area and elsewhere.
| c) The Block Advertisements |
[34] I have commented in these reasons on the distribution of block advertisements throughout the Guidas. No evidence was adduced before me as to any skill or judgment exercised in the organization of the block advertisements within the Guidas. I am satisfied that the block advertisements, taken as a whole, do not constitute a subcompilation within the Guidas. That being said, there remains the issue of whether or not copyright subsists in any or all of the block advertisements individually.
[35] Previously in these reasons, I included a quotation from Slumper-Magic,14 within the context of a quotation from Tele-Direct. For ease of reference, I repeat the Slumper-Magic quotation here, as it appears at pages 115 and 116 of the report of that decision, since I find it to be of particular relevance to the issue of copyright in the individual block advertisements:
| The question is whether the plaintiff had copyright in the brochure? In my opinion, it did. The defendants suggest that there is no copyright in the brochure because it used ideas and elements which are also found in the brochures of other competitors. That, however, does not defeat a claim for copyright. It is well established that compilations of material produced by others may be protected by copyright, provided that the arrangement of the elements taken from other sources is the product of the plaintiff"s thought, selection and work. It is not the several components that are the subject of the copyright, but the overall arrangement of them which the plaintiff through his industry has produced. The basis of copyright is the originality of the work in question. So long as work, taste and discretion have entered into the composition, that originality is established. In the case of a compilation, the originality requisite to copyright is a matter of degree depending on the amount of skills, judgment or labour that has been involved in making the compilation:... Where copyright is claimed in a compilation it is not the correct approach to dissect the work in fragments and, if the fragments are not entitled to copyright, then deduce that the whole compilation is not so entitled; rather, the court should canvass the degree of industry, skill or judgment which has gone into the overall arrangement... |
| The proposition that arrangements of common ideas may be copyright is subject to certain limitations. First, it appears that the compiler can claim no copyright unless he or she had a right to use the materials constituting the compilation;... Secondly, in so far as component ideas may be in the public domain, they themselves may be copied with impunity, without breaching the compiler"s copyright which rest not in the components but in the overall arrangements:... [citations omitted] |
[36] Applying the foregoing principles to the block advertisements individually, and particularly to those where copying to produce equivalent advertisements in the Directories, particularly the 1995/96 Directory is alleged, I conclude that, while a number of the elements in each of the block advertisements could be said to be similar to those found in similar block advertisements in other publications, those elements are arranged, at least on the basis of the evidence before me, in an original way. Mr. Cupo testified at length as to the process he went through in designing and laying out a block advertisement, using elements from various sources, and as to the process he went through in obtaining approval for the design and layout, with or without modifications, from the advertisers.
[37] A number of "contracts" for block advertisements in the Guidas were entered into evidence. Each purported to be between the plaintiff, described as "publishers" and an advertiser, and the "contract" in each case was entitled "advertising insertion contract". In each case, the "contract" included the following clause:
| All material in the Italian Telephone Directory [the Guida] will become property of Ital-Press Ltd., and under no circumstances can be published or displayed in any other publication unless a written permission is given by Ital-Press Ltd. |
Each of the "contracts" appears to have been signed on behalf of the advertiser. Few, only one of those in evidence, are signed on behalf of the plaintiff. Nonetheless, each would appear to constitute clear and unequivocal notice to the advertiser, notice which has been acknowledged by signature, of the plaintiff"s claim to ownership and control of the block advertisement in question.
[38] Counsel for the defendants urged that the "contracts" were in fact equivocal on the issue of ownership. I cannot agree with this submission.
[39] I find the "contracts" to be clear evidence on behalf of the plaintiff on the basis of which it can reasonably assert copyright in the block advertisements, whether or not an equivalent "contract" was entered into in every case and, in those cases where a "contract" would appear to have been signed on behalf of the advertiser, of notice to the advertiser of the claimed copyright by the plaintiff.
[40] I turn to the issue of right to use of the material constituting the block advertisements as referred to by Madame Justice McLachlin in the foregoing quotation from Slumper-Magic. As indicated earlier in these reasons, except with one particular exemption where it was undisputed that a block advertisement was reproduced directly from a yellow pages advertisement by the same advertiser who placed the advertisement in the Guida, there was no evidence, though much innuendo, that the plaintiff did not have the right to use the materials that constituted the compilation that was the block advertisement. Subsection 34(3) of the Copyright Act constitutes a complete answer, on the evidence before me, to the position taken on behalf of the defendants that the plaintiff might not have had the right to use the materials.
[41] I conclude that, on the evidence before me, sufficient skill, judgment and labour were exercised and invested in the design and layout of the block advertisements, that the evidence before me did not establish that the plaintiff was not entitled to use the materials constituting the block advertisements, with a notable exception to which I have alluded earlier and to which I will refer in greater detail later.
| 3) OWNERSHIP OF COPYRIGHT |
[42] I turn briefly to the question of ownership of copyright in the Guidas. At page 1035 of the transcript, counsel for the defendants conceded as follows:
| Assuming, then, that there is copyright in the Guida, the question is, of course, the ownership of that copyright. The defendants concede that the plaintiff would own the copyright in the Guida as a whole; not necessarily the subcompilations, but in the Guida as a whole. |
With or without the concession on behalf of the defendants, I would conclude that ownership of the copyright in the Guidas is with the plaintiff. The evidence of Mr. Cupo was clear to the effect that, while the concept of the Guidas was his and he was the principal author, the conception and authorship were on behalf of the plaintiff. I am satisfied that that evidence was credible and it certainly was uncontradicted. That evidence is consistent with the assertion of ownership of copyright in the Guidas made by the plaintiff on the inside front cover of each volume. Once again, I reach this conclusion without reliance on the copyright registration obtained on the 15th of October, 1994 and for the same reasons that I place no reliance on that registration as to the existence of copyright in the Guidas. Similarly, I conclude that the ownership of copyright in the telephone listings and the block advertisements is with the plaintiff.
| 4) INFRINGEMENT |
| a) Introduction |
[43] Copyright in works such as the Guidas, the telephone listings and the block advertisements does not confer on the owner of the copyright the exclusive right to produce similar such works. By subsection 27(1) of the Copyright Act, copyright is deemed to be infringed by any person only where that person, without the copyright owner"s consent, does anything that, by the Copyright Act , only the owner has the right to do. In U & R Tax Services Ltd. v. H & R Block Canada Inc.15, Mr. Justice Richard, as he then was, wrote at pages 268 and 269:
| In order to find copyright infringement, a plaintiff must prove copying of the work or a substantial part thereof and access to the copyright protected work. In this instance, the defendant has admitted to copying a portion of U & R"s form and the inquiry is therefore directed to whether the copying was "substantial" within the meaning given to that term by the courts: "[w]hat constitutes a "substantial part" is a question of fact and, in this respect, the courts have given more emphasis on the quality of what was taken from the original work rather than the quantity". (Huges G. Richard, "Concept of Infringement in the Copyright Act" in G.F. Henderson, ed., Copyright and Confidential Information Law of Canada (Toronto: Carswell, 1994) 201 at p. 208.) Some of the matters that have been considered by courts in the past include: |
| (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. |
| .... |
| In addition to copying, a plaintiff must prove access to the copied work for there to be infringement.... |
[44] The foregoing is elaborated on in Copinger and Skone James on Copyright16 at
page 168 where the learned authors write:
| Thus if there is a sufficient similarity between the plaintiff"s work and the defendant"s, and the defendant has had an opportunity to copy the plaintiff"s work directly or indirectly, this will establish a prima facie case of copying which the defendant has to answer. This may be done by bringing forward some alternative explanation of the similarities, and the judge"s task will then be, on the evidence as a whole, to decide whether there has been copying or not. [citation omitted] |
The learned authors continue at pages 176 and 177:
| In the case of compilations, ... new publications dealing with a similar subject-matter must, of necessity, resemble existing publications, and the defence of "common source" is frequently made where the new publication is alleged to constitute an infringement of a earlier one. |
| This defence may merely consist in pointing out that the defendant"s work might have been taken from earlier matter, and that its similarity to the plaintiff"s does not create any necessary inference that it has been copied from the plaintiff"s, rather than from other similar works. But a bare assertion that the plaintiff"s work was not copied, without any explanation by the defendant as to how or when he worked or how long it took him, may well not be enough to rebut the inference of copying. |
| ... |
| And the compiler of a directory may use a prior directory in the same way as any other member of the public as a guide of what streets he must go to for his information, but he may not copy the information from the prior guide into a competing work. ... [citations omitted] |
Finally, at page 180, the following appears:
| While, as has been seen, the compiler of certain kinds of works may lawfully use prior compilations for the purpose of ascertaining the sources available, the position is not the same in regard to those compilations in which part of the merit lies in selection of what is compiled. |
| ... |
| This principle applies to any selection or compilation which involves skill or judgment or some sort of discrimination in the elimination of the things or articles not needed for that sole purpose. ... [citations committed] |
[45] The following analysis proceeds on the evidence before me in this matter and against the foregoing principles.
| b) The Guidas as a Whole |
[46] Earlier in these reasons, I engaged in a fairly lengthy description of the appearance and the content of the Guidas and the Directories. In summary, the Directories are the same size and shape as the Guidas. The cover design of the 1994 Directory is substantially similar to that of the 1993 Guida. The cover design of the 1995/96 Directory, while quite different from that of the Guidas and of the 1994 Directory, maintains the same principal features. The major components of the Guidas and the Directories, at least as the Guidas relate to Alberta, are the same: telephone listings for persons appearing to be of Italian origin and block advertisements in relation to businesses and services that are likely to be of particular appeal to Canadians of Italian origin. The other components, while different, are of substantially similar nature, once again the principal feature being appeal to Canadians of Italian origin.
[47] I am satisfied that the evidence leaves no room for doubt that the defendants, or at least such of them as were in existence at the time of publication of the two versions of the Directory that are in issue, had access to the Guidas having regard to the factors enumerated in U & R Tax Services Ltd.,17 I am also satisfied, taking into account the analysis which follows with respect to copying of the telephone listings and copying of the block advertisements, that the defendants or certain of them, copied a substantial part of the Guidas to produce their directories. In particular, the quality of the material taken, judged in relation to the unique utility of the Guidas, was substantial. In relation to the telephone listings, at least, the quantity of the material taken was also substantial. I am satisfied, given the closed market to which the Guidas and the Directories were addressed, that the evidence adduced before me leaves no shadow of a doubt that the defendants" use adversely affected the plaintiff"s activities and diminished the value of the plaintiff"s copyright, albeit that quantification of the adverse effect and of the reduction of value might be difficult to establish and, in the absence of clear and convincing evidence, might be no more than nominal.
[48] I have dealt previously with the issue of the material taken as the proper subject matter of copyright. I am satisfied that the defendants, or such of them as are relevant with respect to each version of the Directory, intentionally appropriated the plaintiff"s work to save time and effort.
[49] Finally, I am satisfied that the material taken was used in the same or a very substantially similar fashion to the plaintiff"s use of the same material.
| b) The Telephone Listings |
[50] As indicated earlier, Mrs. Sicoli admitted to copying of the Alberta listings from the 1993 Guida to produce the 1994 Directory. I reiterate, for ease of reference, her testimony on examination for discovery where, with regard to the production of the 1994 Directory and the use of the 1993 Guida, she stated that she "... saw after and I agree. I saw it"s same, yes." As indicated earlier, Mrs. Sicoli attempted to rebut this admission during her examination and cross-examination at trial, but, I conclude, without success. Apart from this admission, the plaintiff"s evidence at trial with regard to copying of listings from the 1993 Guida to produce the 1994 Directory far outweighed the evidence on behalf of the defendants to the contrary. There can be no doubt that the defendants, at the time the 1994 Directory was developed, had available to them data accumulated in the publication of the various directories for the Edmonton area for the late 1970s, and had available to them subscription lists for their various newspapers. That being said, I am satisfied that the defendants, or, once again, such of them as were involved in the publication of the 1994 Directory, chose to rely primarily on substantial copying from the 1993 Guida.
[51] It was with respect to the publication of the 1995/96 Directory that the evidence adduced before me presented greater difficulty. Mr. Sicoli testified at length as to the elaborate process that he and those associated with him in the development of the 1995/96 Directory engaged in in order to avoid copying of the listings in the 1995 Guida in order to fulfill the undertaking given to this Court, and perhaps also the injunction imposed by the Court.
[52] In the course of an intervention at trial by counsel for the plaintiff during the testimony of Mr. Sicoli on the elaborate process for development of the listing for the 1995/96 Directory, I suggested that counsel for the plaintiff was attempting to characterize the process as a "smoke screen" for copying or substantial copying. Certainly the evidence on behalf of the plaintiff with regard to comparisons between the listings in the 1995 Guida and the 1995/96 Directory, including comparisons showing the adoption in the 1995/96 Directory of "decoy names" built into the listings in the 1995 Guida, went a long way to demonstrate copying with token typographical, stylistic or other variations of a superficial nature.
[53] As indicated earlier in these reasons, while I was not entirely impressed with the reliability of the evidence of Mr. Cupo on behalf of the plaintiff, I was much less impressed with the reliability of the evidence of Mr. Sicoli on behalf of the defendants who, I found, to be evasive and to have come to Court with substantial gaps in his knowledge that left me in grave doubt as to the reliability of his testimony on the actual process by which the listings for the 1995/96 Directory were in fact produced.
[54] Weighing the evidence before me as a whole, and taking into account the demeanour of witnesses who appeared before me, I conclude that the defendants simply did not independently develop their telephone listings for the 1995-96 Directory in a manner that was open to them, using the 1995 Guida simply as a reference to confirm the listings developed by them. Rather, I conclude, on a balance of probabilities, the evidence shows that the defendants copied or substantially copied the listings from the 1995 Guida to produce the listings comprised in the 1995/96 Directory.
| c) The Block Advertisements |
[55] In Slumber-Magic18, under the heading "Did the Defendants Copy the Plaintiff"s Materials?", Madame Justice McLachlin wrote at page 117:
| The defendants produced a brochure which is identical to the plaintiff"s brochure except for a few, relatively minor, variations. The photograph is different, but it is a copy of the photograph taken at the plaintiff"s premises in which the plaintiff had copyright. The word "daily" is substituted for "repeatable" before "relief" on the reverse side and "B.C." is substituted for "Canadian" in describing the ownership. Apart from these variations, the only change was the substitution of Sleep-King"s name for that of the plaintiff. The arrangement is the same, to the type used for the slogans to the position of the pictures and diagrams. |
[56] A similar analysis can be made with respect to a number of the block advertisements that appear in the 1993 and 1995 Guidas. In a number of advertisements in the defendant"s Directories, style of print and font is changed, in some cases data is added or deleted and photographs or sketches are rearranged. In a few cases, borders are redesigned. But in each case identified in Appendices B and C, I am satisfied that the block advertisements appearing in the Directories are clearly recognizable as copies or substantially copies of the equivalent advertisements in the Guidas.
[57] To paraphrase the paragraph in the reasons from Slumper-Magic that follows the paragraph quoted immediately above, I have no hesitation in concluding that the defendants substantially copied the arrangement of materials, and the principal elements, in the equivalent block advertisements in which I found the plaintiff to hold copyright. The defendants thereby wrongly appropriated to themselves what the plaintiff by its work, skill and judgment had made its own property.
[58] For the foregoing reasons, I conclude that the defendants, or some of them, infringed the copyright of the plaintiff in the block advertisements listed in Appendix B in publishing the advertisements in the 1994 Directory that appear in the 1993 Guida at the page references to each of those publications that appear in Appendix B.
[59] Similarly, I conclude that the defendants, or some of them, infringed the copyright of the plaintiff in the block advertisements listed in Appendix C in publishing the advertisements in the 1995/96 Directory that appear in the Guidas at the page references to the 1995/96 Directory and to the 1993 and 1995 Guidas that appear in Appendix C.
[60] In reaching the foregoing conclusions, I have not found infringement in circumstances where it could be said to be in doubt on the evidence before me that the plaintiff had the right to use the materials constituting a compilation that is a block advertisement. An example of such a circumstance is represented in the advertisement for "Vacuum Specialists" that appears in the 1993 Guida at page 15 in the Calgary section, in the 1995 Guida at page 8 in the Calgary section and in the 1994 Directory at page 71. The evidence before me closely established that that block advertisement was merely copied by the plaintiff from an equivalent yellow pages advertisement by the same advertiser in the Calgary municipal telephone directory.
| d) The Infringers |
[61] Counsel for the defendants acknowledged that, if infringement were to be found in the publication of the 1994 Directory, Il Nuovo Mondo Publishing Inc. was the publisher of that Directory and it would be responsible for the infringement. It is to be noted that, earlier in these reasons, reference was made to the fact that the defendant Alberta Italian Yellow Directory Inc. was not incorporated until after the publication of the 1994 Directory. Although the evidence before me, and the terms of the Statement of Defence, are somewhat contradictory in that regard, on the basis of the Certificate of Incorporation before me, I accept that to be the case and therefore it would be perverse to find Alberta Italian Yellow Directory Inc. to be responsible for the infringement of the plaintiff"s copyright that is reflected in the 1994 Directory.
[62] Counsel for the defendant further acknowledged that, if infringement were found with respect to the publication of the 1995/96 Directory, Alberta Italian Yellow Directory Inc. was the publisher of that Directory and it should be held responsible for the infringement. I am satisfied that that is consistent with the evidence before me, although the reference in the 1995/96 Directory to publication of that Directory "...under the supervision of Il Nuovo Mondo Publishing Inc. and Josephine Sicoli "leaves room to conclude that Il Nuovo Mondo Publishing Inc. might also have some responsibility.
[63] Counsel for the plaintiff urged that Mrs. Sicoli was the directing mind of both corporate defendants, and should be held responsible, equally with each of the corporate defendants, for the infringement of the plaintiff"s copyright that I have found to have been perpetrated in both the 1994 and the 1995/96 Directories. As indicated earlier in these reasons, I have no hesitation whatsoever, on the testimony before me, in concluding that Mrs. Sicoli was in fact the directing mind behind both of the corporate defendants and behind the publication of both the 1994 and the 1995/96 Directories. As indicated earlier, in two block advertisements in the 1995/96 Directory, Mrs. Sicoli is listed as "Chief Administrator" of the Directory. Similarly, also in the 1995/96 Directory, as indicated in the preceding paragraph, publication of the Directory is indicated to be "under the supervision of" Mrs. Sicoli. Her guiding role is entirely consistent with the fact that, at a time when she was the sole identified defendant in this matter, it was she who, on behalf of herself and "...her servants, agents and employees,..." gave an undertaking to the Court and consented to an order in which she and her servants, agents and employees were directed to refrain from copying, reproducing, authorizing the copying of or reproduction of or otherwise using in any way the Guida or any substantial part thereof, in any material form whatsoever.
[64] In Mentmore Manufacturing Co., Ltd. et al v. National Merchandise Manufacturing Co. Inc. et al.19, the Federal Court of Appeal had before it an appeal in a patent infringement action where Mr. Justice Le Dain, at page 166, described the issue before the Court in the following terms:
| The issue on appeal is whether the respondent ..., because of the nature of his involvement in the manufacture and sale of the retractable pens that were found by the Trial Division to have infringed the Mentmore patent, should be held personally liable for the infringement. |
[65] Mr. Justice Le Dain continued at page 171:
| The appellants relied particularly on the following statement of the law in 29 Hals., 3rd ed., p. 90, para. 192, "Patents and Inventions" which, while it does not expressly refer in the notes to what was said by Lord Atkin in Performing Right Society, Ltd. v. Ciryl Theatrical Syndicate, Ltd., [1924] 1 K.B. 1, would appear to be based upon it: |
| 192. Liability of directors for infringement. The directors of a company are not personally liable for infringements by the company, even if they are managing directors or the sole directors and shareholders, unless either (1) they have formed the company for the purpose of infringing; or (2) they have directly ordered or authorised the acts complained of; or (3) they have so authorized or ordered by implication. |
| What is involved here is a very difficult question of policy. On the one hand, there is the principle that an incorporated company is separate and distinct in law from its shareholders, directors and officers, and it is in the interests of the commercial purposes served by the incorporated enterprise that they should as a general rule enjoy the benefit of the limited liability afforded by incorporation. On the other hand, there is the principle that everyone should answer for his tortious acts. The balancing of these two considerations in the field of patent infringement is particularly difficult. |
[66] I am satisfied that precisely the same difficulty in balancing of the two considerations reflected in the foregoing quotation arises in the field of copyright infringement.
[67] Mr. Justice Le Dain continued at page 174:
| I do not think we should go so far as to hold that the director or officer must know or have reason to know that the acts which he directs or procures constitute infringement. That would be to impose a condition of liability that does not exist for patent infringement generally. I note such knowledge has been held in the United States not to be material where the question is the personal liability of directors or officers: see Deller"s Walker on Patents, 2nd ed. (1972), vol. 7, pp. 117-118. But in my opinion there must be circumstances from which it is reasonable to conclude that the purpose of the director or officer was not the direction of the manufacturing and selling activity of the company in the ordinary course of his relationship to it but the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it. The precise formulation of the appropriate test is obviously a difficult one. Room must be left for a broad appreciation of the circumstances of each case to determine whether as a matter of policy they call for personal liability. |
[68] The Mentmore decision has been widely followed in a number of jurisdictions and in this Court.20
[69] Against the formulation of the test set out in Mentmore, I am satisfied that the evidence before me demonstrates that Mrs. Sicoli, the directing mind behind the enterprises of the corporate defendants throughout the period that is relevant for the purposes of this matter, and apparently, also at the relevant times, the sale director and shareholder of the corporate defendants, reflected, at the very least, an indifference to the risk that the course of conduct on which the corporate defendants engaged was likely to constitute infringement of copyright or, in turn, reflected an indifference to the risk of the copyright infringement that I have found took place. In the circumstances, I find Mrs. Sicoli personally liable for the infringement, together with Il Nuovo Mondo Publishing Ind. in the case of the 1994 Directory, and together with Alberta Italian Yellow Directory Inc. in the case of the 1995/96 Directory.
PASSING OFF
[70] In the Amended Statement of Claim filed the 4th of February, 1998, the plaintiff alleges that it enjoys goodwill in the geographical area of Alberta and enjoys a reputation as a provider of good quality telephone directories containing information relevant to the geographical area of Alberta. The plaintiff further pleads that the defendants directly and through their agents, have actively misled potential advertisers to believe that they were purchasing advertising space in the Guida and not in the Directories and that the defendants were the licensees or successors of the plaintiff. The plaintiff pleads that the acts and conduct of the defendants were at all material times calculated to deceive and mislead and that they have in fact deceived and misled the trade and general public. Further, the plaintiff pleads that the defendants have directed public attention to their advertising services and to their directories in such a way as to cause or to be likely to cause confusion in Canada between their advertising services and the advertising services of the plaintiff. In the result, the plaintiff pleads that the defendants have passed off their Directories and their advertising services as and for the Guidas and the advertising services of the plaintiff. Thus, the issue of passing-off is raised.
[71] Section 7 of the Trade-marks Act21, at all relevant times, read as follows:
| 7. No person shall (a) make a false or misleading statement tending to discredit the business, wares or services of a competitor; (b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another; (c) pass off other wares or services as and for those ordered or requested; (d) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to (i) the character, quality, quantity or composition, (ii) the geographical origin, or (iii) the mode of the manufacture, production or performance of the wares or services; or (e) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada. |
7. Nul ne peut_: a) faire une déclaration fausse ou trompeuse tendant à discréditer l'entreprise, les marchandises ou les services d'un concurrent; b) appeler l'attention du public sur ses marchandises, ses services ou son entreprise de manière à causer ou à vraisemblablement causer de la confusion au Canada, lorsqu'il a commencé à y appeler ainsi l'attention, entre ses marchandises, ses services ou son entreprise et ceux d'un autre; c) faire passer d'autres marchandises ou services pour ceux qui sont commandés ou demandés; d) utiliser, en liaison avec des marchandises ou services, une désignation qui est fausse sous un rapport essentiel et de nature à tromper le public en ce qui regarde_: (i) soit leurs caractéristiques, leur qualité, quantité ou composition, (ii) soit leur origine géographique, (iii) soit leur mode de fabrication, de production ou d'exécution; e) faire un autre acte ou adopter une autre méthode d'affaires contraire aux honnêtes usages industriels ou commerciaux ayant cours au Canada. |
[72] In Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd.22, Mr. Justice MacGuigan wrote at page 554:
| After the MacDonald decision it might be hard to argue that paragraph 7(e) had any constitutional validity, but it would appear that the remaining paragraphs of section 7 were not found unconstitutional by the Chief Justice.23 |
[73] Mr. Justice MacGuigan concluded in relation to the MacDonald decision in the following terms at page 557:
| In sum, the effect of the MacDonald case, in my opinion, is that paragraph 7(b) is intra vires of the Parliament of Canada, "in so far as it may be said to round out regulatory schemes prescribed by Parliament in the exercise of its legislative power in relation to patents, copyrights, trade marks and trade names". |
| However, since this is a dictum of the Chief Justice rather than the ratio decidendi of the case, the matter must be looked at more closely in relation to precedent and principle. |
[74] Mr. Justice MacGuigan continued at page 560:
| Paragraph 7(b) is a statutory statement of the common law action of passing off, which consisted of a misrepresentation to the effect that one"s goods or services are someone else"s or sponsored by or associated with that other person. It is effectively a "piggybacking" by misrepresentation. |
[75] Mr. Justice MacGuigan concluded in the following terms:
| The Canadian Act, as the statutory history set out by Laskin C.J.C. in the MacDonald case, supra, showed, has traditionally been concerned with the protection of unregistered as well as registered trade marks. In this it is like the Copyright Act ..., whose coverage is broader than registered copyright. In both Acts what registration does is to provide additional benefits over and above those available at common law. |
| In reviewing the scheme of the Act in Royal Doulton Tableware Limited v. Cassidy"s Ltd., ... Strayer J. said that the Trade Marks Act in sections 1 to 11 defines and prescribes a number of rules concerning trade marks and the adoption thereof, without reference to registration. Thereafter, the Act only deals with registered trade marks." He adds: "Parliament by section 1 to 11 of the Trade Marks Act has prescribed a regime concerning what constitutes a trade mark and the adoption thereof, whether registered or not." |
| In paragraph 7(b) Parliament has chosen to protect the goodwill associated with trade marks. In this way, as Chief Justice Laskin put it, it "rounds out" the statutory scheme of protection of all trade marks. As such, the civil remedy which it provides in conjunction with section 53 is "genuinely and bona fide integral with the overall plan of supervision": ... It has, in sum, a rational functional connection to the kind of trade marks scheme Parliament envisaged, in which even unregistered marks would be protected from harmful misrepresentations. |
| In my view, paragraph 7(b) is clearly within federal constitutional jurisdiction under subsection 91(2) of the Constitution Act, 1867. [citations omitted] |
[76] From the foregoing, I conclude that section 7 of the Trade-marks Act can only be invoked where a "trade marks scheme" is pleaded and established by evidence. On the material and evidence before me, no "trade marks scheme" is either pleaded or established in evidence.
[77] It was not argued before me, certainly not with any conviction, that this Court has any jurisdiction with respect to the common law action of passing off. I am satisfied that it does not. To the extent that it has jurisdiction in respect of the equivalent of the common law action of passing off, that jurisdiction must be found in paragraph 7(b) of the Trade-marks Act.
[78] On the basis of the foregoing brief analysis of the jurisdiction of this Court and of the pleadings and evidence before me, I conclude that the plaintiff"s claim with respect to passing off cannot succeed either on the ground that this Court lacks jurisdiction or, on the alternative ground, that any basis of jurisdiction in this Court has not been pleaded and has not been established by the evidence before the Court.
REMEDIES
| 1) A PERMANENT INJUNCTION |
[79] A permanent injunction would, in the normal course of things, follow as a result of my findings and conclusions in this matter. Counsel for the defendant submitted that a permanent injunction is an equitable remedy and as such is discretionary. He urged that I should not exercise my discretion in favour of the plaintiff on the grounds of delay between the time the plaintiff first became aware of the publication of 1994 Guida and the commencement of this action and on the basis that the plaintiff simply does not come to this Court seeking relief with clean hands. I reject these arguments. I find no inordinate, unreasonable or inexcusable delay. The allegations with respect to lack of clean hands are essentially based on a representation that I should determine evidence of Mr. Cupo not to be credible and, in addition, on innuendo drawn for the testimony of Mr. Cupo and from inferences that counsel suggests I should draw from the totality of the evidence before me. I have previously commented on the credibility of testimony before me, such commentary being based not solely on the testimony itself but also on my observation of the demeanor of those testifying before me.
[80] No form of permanent injunction was proposed in the pleadings in this matter, nor was a form urged at trial. Further, no argument as to the form that such an injunction might take was presented at trial. In the result, a draft of these reasons to the point of this paragraph was distributed to counsel who were invited to make submissions regarding the form of an injunction.
[81] Counsel for the plaintiff proposed an injunction in the following form:
| 1. The Defendants and each of them, their Shareholders, Officers and Directors, their successors in title to ownership of their shares or assets, their employees, their servants, their agents, their mandataries, their sponsors, their associates, and all those over whom they exercise control, directly and indirectly; are hereby ordered to and shall refrain from producing, publishing, communicating electronically, telecommunicating,, making available or, distributing, advertising, sponsoring, endorsing, becoming associated with in any way or making known any work which is in whole or in part a body of listings of names of persons, their addresses and their phone numbers (or just their names and phone numbers) where the majority of those persons are of Italian descent or are thought to be of Italian descent and where those persons are residing in the Provinces of Alberta and British Columbia or the Province of Alberta or the Province of British Columbia. |
| 2. James Sicoli, Anna Lamki, Anna Sicoli and John Oluk, and each of them, their employees, their servants, their agents, their mandataries, their sponsors, their associates, and all those over whom they exercise control, directly and indirectly are hereby ordered to and shall refrain from producing, publishing, communicating electronically, telecommunicating, making available, distributing, advertising, sponsoring, endorsing, becoming associated with in any way or making known any work which is in whole or in part a body of listings of names of persons, their addresses and their phone numbers (or just their names and phone numbers) where the majority of those persons are of Italian descent or are thought to be of Italian descent and where those persons are residing in the Provinces of Alberta and British Columbia or the Province of Alberta or the Province of British Columbia. |
| 3. The Defendants and each of them, their Shareholders, Officers and Directors, and James Sicoli, Anna Lamki, Anna Sicoli and John Oluk, and each of them are hereby ordered to and shall forever refrain from corresponding with any persons in regard to their attendance as a witness for the Plaintiff or for the Defendants in any hearing in this action. Nothing in this paragraph 3 shall be taken to enjoin duly appointed and recorded solicitors for those parties aforementioned, from so corresponding with persons in regard to their attendance as witness for the Plaintiff or the Defendants. |
[82] Counsel for the defendants indicated to the Court that he was instructed to oppose the contents of the proposed form of injunction as set out above, although no grounds for opposition were made known to the Court, and that he was further instructed not to propose an alternative form of permanent injunction.
[83] I have three principal concerns regarding the form of injunction proposed on behalf of the plaintiff;
| - first, it purports to enjoin named individuals who were known, or could reasonably have become known, to the plaintiff and whom the plaintiff saw fit not to add as defendants. While it is not uncommon in matters such as this to provide an injunction that extends to persons over whom a named defendant can be demonstrated to exercise some degree of control, I know of no authority for extending an injunction to named individuals who, while they might in the past have been subject to some control by a named defendant, are not themselves named defendants and who might, at the time the injunction issues or at some later time act entirely independently from all named defendants;24 |
| - second, the proposed form of injunction purports to enjoin a broad range of actions that I have not found to infringe the plaintiff"s copyright. It is implicit in these reasons that it is entirely foreseeable that a Canadian/Italian telephone directory for Alberta and/or British Columbia that would not infringe the plaintiff"s copyright could be developed and published. It is clearly beyond the jurisdiction of this Court, at least in the context of this matter, to prohibit such a publication; and |
| - third, the third proposed paragraph relates to a late intervention in these proceedings, just before the trial started, by an individual who is not a defendant. While the intervention was entirely inappropriate and indeed dishonest, it was not a subject of the action and there was no substantive evidence before me as to its impact on the business of the plaintiff. It might properly be the subject-matter of an interlocutory application in this proceeding or of a separate proceeding, but it is certainly not the proper subject-matter of a permanent injunction in this proceeding. |
[84] In the result, I find the form of injunction proposed on behalf of the plaintiff to be unacceptable.
[85] A permanent injunction in favour of the plaintiff will issue in the following terms:
| The Defendant Giuseppina Sicoli, by whatever name known, her agents, employees, associates, representatives and all other persons, personal or corporate, acting on her behalf or under her control, are prohibited from producing, publishing, communicating electronically, telecommunicating, making available or distributing any work that infringes the copyright of Ital-Press Ltd. in L"unica Guida Telefonica Italiana per L"Ovest Canada (the "Guida") or any part thereof; |
| Giuseppina Sicoli, by whatever name known, her agents, employees, associates, representatives and all other persons, personal or corporate, acting on her behalf or under her direction, are further prohibited from providing or offering advice or information to any person that would, could, or will directly or indirectly encourage, assist, aid or abet any person in Canada in producing, publishing, communicating electronically, telecommunicating, making available or distributing any work which infringes the copyright of Ital-Press Ltd. in the Guida, or any part thereof; |
| The defendants Alberta Italian Yellow Directory Inc. and Il Nuovo Mondo Publishing Inc. (the "corporate defendants") and each of them, their shareholders, officers and directors, agents, employees, associates, representatives and all other persons, personal or corporate, acting on their behalf or on behalf of either of them are prohibited from producing, publishing, communicating electronically, telecommunicating, making available or distributing any work that infringes the copyright of Ital-Press Ltd. in the Guida or any part thereof; and |
| The corporate defendants, their shareholders, officers, directors, agents, employees, associates, representatives and all other persons, personal or corporate, acting on their behalf or on behalf of either of them are prohibited from providing or offering advice or information to any person that would, could, or will directly or indirectly encourage, assist, aid or abet any person in Canada in producing, publishing, communicating electronically, telecommunicating, making available or distributing any work that infringes the copyright of Ital-Press in the Guida or in any part or parts thereof. |
| 2) damages and/or profits, delivery-up and punitive damages |
[86] Once again, at the trial of this matter, no evidence was adduced before me with regard to these reliefs and no argument was advanced. A further hearing with respect to these aspects of this litigation is now anticipated for September, 1999. A supplementary judgment may follow.
COSTS
[87] As with regard to remedies other than a permanent injunction, costs were not addressed at trial. Once again, it is anticipated that they may be addressed in a supplementary judgment following a further hearing.
____________________________
Judge
Ottawa, Ontario
May 31, 1999
APPENDIX A
| Extracts from the Copyright Act as it read at the time of publication in the Spring of 1993 (See paragraph 81 of the reasons.) |
| In this Act, ... "every original literary, dramatic, musical and artistic work" includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works or compositions with or without words, illustrations, sketches and plastic works relative to geography, topography, architecture or science; ... "literary work" includes tables, compilations, translations and computer programs; ... 3.(1) For the purposes of this Act, "copyright" means the sole right to produce or reproduce the work or any substantial part thereof in any material from whatever, to perform, or in the case of a lecture to deliver, 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 a) to produce, reproduce, perform or publish any translation of the work, b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work, c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise, (d) in the case of a literary, dramatic or musical work, to make any record, perforated roll, cinematograph film or other contrivance by means of which the work may be mechanically performed or delivered, (e) subject to subsection (2), in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work by cinematograph, if the author has given the work an original character, (f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunications, (g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after the coming into force of this paragraph, other than a map, chart or plan or cinematographic production that is protected as a photograph, and to authorize any such acts. ... 5.(1) Subject to this Act, copyright shall subsist in Canada for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work, if the author was at the date of the making of the work a British subject, a citizen or subject of a foreign country that has adhered to the Convention and the Additional Protocol thereto set out in Schedule II or a resident within Her Majesty"s Realms and Territories, and if, in the case of a published work, the work was first published within Her Majesty"s Realms and Territories or in that foreign country, but in no other works, except in so far as the protection conferred by this Act is extended as hereinafter provided to foreign countries to which this Act does not extend. ... 13. (1) Subject to this Act, the author of a work shall be the first owner of the copyright therein. |
| ... 13.(3) Where the author of a work was in the employment of some other person under a contract of service of apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright, but where the work is an article or other contribution to a newspaper, magazine or similar periodical, there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the publication of the work, otherwise than as part of a newspaper, magazine or similar periodical. ... 34.(1) Where copyright in any work has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts and otherwise that are or may be conferred by law for the infringement of a right. (1.1) In any proceedings for an infringement of a moral right of an author, the court may grant to the author all remedies by way of injunction, damages, accounts or delivery up and otherwise that are or may be conferred by law for the infringement of a right. (2) The costs of all parties in any proceedings in respect of the infringement of copyright shall be in the absolute discretion of the court. (3) In any action for infringement of copyright in any work in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff thereto, (a) the work shall, unless the contrary is proved, be presumed to be a work in which copyright subsists; and (b) the author of the work shall, unless the contrary is proved, be presumed to be the owner of the copyright. ... 53. (2) A certificate of registration of copyright in a work is evidence that copyright subsists in the work and that the person registered is the owner of the copyright. ... 54. (3) In the case of an encyclopaedia, newspaper, review, magazine or other periodical work, or work published in a series of books or parts, it is not necessary to make a separate entry for each number or part, but a single entry for the whole work is sufficient. ... |
| Les définitions qui suivent s"appliquent à la présente loi. ... "_toute oeuvre littéraire, dramatique, musicale ou artistique originale_" S'entend de toutes les productions originales du domaine littéraire, scientifique et artistique, quel qu'en soit le mode ou la forme d'expression, telles que les livres, brochures et autres écrits, les conférences, les oeuvres dramatiques ou dramatico-musicales, les oeuvres ou compositions musicales avec ou sans paroles, les illustrations, croquis et les ouvrages plastiques relatifs à la géographie, à la topographie, à l'architecture ou aux sciences. .. "_oeuvre littéraire_" Sont assimilés à une oeuvre littéraire les tableaux, les compilations, les traductions et les programmes d'ordinateur. ... 3.(1) Pour l"application de la présente loi, "_droit d"auteur_" s"entend du droit exclusif de produire ou de reproduire une oeuvre, ou une partie importante de celle-ci, sous une forme matérielle quelconque, d"exécuter ou de représenter ou, s"il s"agit d"une conférence, de débiter, en public, et si l"oeuvre n"est pas publiée, de publier l"oeuvre ou une partie importante de celle-ci; ce droit s"entend, en outre, du droit exclusif: a) de produire, reproduire, représenter ou publier une traduction de l"oeuvre; b) s"il s"agit d"une oeuvre dramatique, de la transformer en un roman ou en une autre oeuvre non dramatique; c) s"il s"agit d"un roman ou d"une autre oeuvre non dramatique, ou d"une oeuvre artistique, de transformer cette oeuvre en une oeuvre dramatique, par voie de représentation publique ou autrement; d) s"il s"agit d"une oeuvre littéraire, dramatique ou musicale, de confectionner toute empreinte, tout rouleau perforé, film cinématographique ou autres organes quelconques, à l"aide desquels l"oeuvre pourra être exécutée ou représentée ou débitée mécaniquement; e) s"il s"agit d"une oeuvre littéraire, dramatique, musicale ou artistique et sous réserve du paragraphe (2), de reproduire, d"adapter et de présenter publiquement l"ouvrage par cinématographie, si l"auteur a donné une caractère original à son ouvrage; f) de communiquer au public, par télécommunication, une oeuvre littéraire, dramatique, musicale ou artistique; g) de présenter au public lors d"une exposition, à des fins autres que la vente ou la location, une oeuvre artistique -- autre qu"une carte géographique ou marine, un plan, un graphique ou une production cinématographique jouissant de la protection accordée aux oeuvres photographiques -- créée après l"entrée en vigueur du présent alinéa. Est inclus dans la présente définition le droit exclusif d"autoriser ces actes. ... 5.(1) Sous réserve des autres dispositions de la présente loi, le droit d"auteur existe au Canada, pendant la durée mentionnée ci-après, sur toute oeuvre originale littéraire, dramatique, musicale ou artistique, si, à l"époque de la création de l"oeuvre, l"auteur était sujet britannique, citoyen ou sujet d"un pays étranger ayant adhéré à la Convention et à son Protocole additionnel, qui figurent à l"annexe II, ou avait son domicile dans les royaumes et territoires de Sa Majesté, et si, dans le cas d"une oeuvre publiée, l"oeuvre a été publiée en premier lieu dans les royaumes et territoires de Sa Majesté ou dans l"un de ces pays étrangers; mais ce droit n"existe sur aucune autre oeuvre, sauf dans la mesure où la protection garantie par la présente loi est étendue, conformément aux prescriptions qui suivent, à des pays étrangers auxquels la présente loi ne s"applique pas. ... 13.(1) Sous réserve des autres dispositions de la présente loi, l"auteur d"une oeuvre est le premier titulaire du droit d"auteur sur cette oeuvre. |
| ... 13.(3) Lorsque l"auteur est employé par une autre personne en vertu d"un contrat de louage de service ou d"apprentissage, et que l"oeuvre est exécutée dans l"exercice de cet emploi, l"employeur est, à moins de stipulation contraire, le premier titulaire du droit d"auteur, mais lorsque l"oeuvre est un article ou une autre contribution, à un journal, à une revue ou à un périodique du même genre, l"auteur, en l"absence de convention contraire, est réputé posséder le droit d"interdire la publication de cette oeuvre ailleurs que dans un journal, une revue ou un périodique semblable. ... 34.(1) Lorsque le droit d"auteur sur une oeuvre a été violé, le titulaire du droit est admis, sous réserve des autres dispositions de la présente loi, à exercer tous les recours, par voie d"injonction, dommages-intérêts, reddition de compte ou autrement, que la loi accorde ou peut accorder pour la violation d"un droit. (1.1) Le tribunal, saisi d"un recours en violation des droits moraux, peut accorder à l"auteur les réparations qu"il pourrait accorder, par voie d"injonction, de dommages-intérêts, de reddition de compte, de restitution ou autrement, et que la loi prévoit ou peut prévoir pour la violation d"un droit. (2) Les frais de toutes les parties à des procédures relatives à la violation du droit d"auteur sont à la discrétion absolue du tribunal. (3) Dans toute action pour violation du droit d"auteur sur une oeuvre, si le défendeur conteste l"existence du droit d"auteur ou la qualité du demandeur: a) l"oeuvre est, jusqu"à preuve contraire, présumée être une oeuvre protégée par un droit d"auteur; b) l"auteur de l"oeuvre est, jusqu"à preuve contraire, présumé être le titulaire du droit d"auteur. ... 53. (2) Une certificat d"enregistrement de droit d"auteur sur une oeuvre est une preuve que cette oeuvre fait l"objet d"un droit d"auteur et que la personne portée à l"enregistrement est le titulaire de ce droit d"auteur. ... 54.(3) Dans le cas d"une encyclopédie, d"un journal, revue, magazine ou autre publication périodique, ou d"une oeuvre publiée en une série de tomes ou de volumes, il n"est pas nécessaire de faire une inscription distincte pour chaque numéro ou tome, mais une seule inscription suffit pour l"oeuvre entière. ... |
APPENDIX B
| BLOCK ADVERTISEMENTS IN THE 1994 DIRECTORY IN RESPECT OF WHICH IT HAS BEEN DETERMINED THAT THERE WAS SUBSTANTIAL COPYING FROM AN EQUIVALENT BLOCK ADVERTISEMENT IN THE 1993 GUIDA |
(See paragraph 137 of the reasons)
| Advertiser |
1. Canovale Woodcraft Ltd
2. Sands Motor Hotel Ltd.
3. Il Centro
Location in the 1994 Directory
| Page 29 |
Page
Page 78
Location of Equivalent Block Advertisement in the 1993 Guida
Edmonton, p. 5
Edmonton, p. 7
Calgary, p. 6
APPENDIX C
| BLOCK ADVERTISEMENTS IN THE 1995/96 DIRECTORY IN RESPECT OF WHICH IT HAS BEEN DETERMINED THAT THERE WAS SUBSTANTIAL COPYING FROM AN EQUIVALENT BLOCK ADVERTISEMENT IN THE 1993 OR 1995 GUIDA |
(See paragraph 138 of the reasons)
Advertiser
1. Anthony Jewellers Ltd.
2. Armando"s Ristorante Italiano
3. Becky"s Draperies &
Manufacturing Ltd.
4. Calgary Italian Bakery
5. Currencies International
6. D"Angelo Studio
7. Italian Super Market Ltd.
8. Delizia"s Pasta
9. Lupi Construction Ltd.
10. Nicastro Foods & Gift Ware
Location in the 1995/96 Directory
Calgary, p. 13
Calgary, p. 15
Calgary, p. 18
Calgary, p. 24
Calgary, p. 31
Calgary, p. 34
Calgary, p.35
Calgary, p. 36
Calgary, p. 57
Calgary, p. 65
Location of Equivalent Block Advertisement in the 1993 or 1995 Guida
Calgary, p. 22 ("95)
Calgary, p. 14 ("95)
Calgary, p. 3 ("95)
Calgary, p. 8 ("95)
Calgary, p. 17 ("93)
Calgary, p. 20 ("95)
Calgary, p. 5 ("95)
Calgary, p. 8 ("95)
Calgary, p. 18 ("95)
Calgary, p. 6 ("95)
11. Petrin Bros. Construction Ltd.
12. Roma Catering
13. Tony"s Frame & Alignment Ltd.
14. Umberto"s Custom Tailors Ltd.
15. Vagabondo Italian Restaurant & Catering
16. Palazzo Izzo
17. Di Luigi Bros. Masonry Ltd.
18. Sands Motor Hotel Ltd.
19. Vinton Carpets
20. Butte Travel Service (1985) Ltd.
Calgary, p.69
Calgary, p. 77
Calgary, p. 85
Calgary, p. 87
Calgary, p. 88
Calgary, p. 90
Edmonton, p. 42
Edmonton, p. 95
Edmonton, p. 105
Edmonton, p. 20
Calgary, p. 18 ("95)
Calgary, p. 11 ("95)
Calgary, p. 21 ("95)
Calgary, p. 20 ("95)
Calgary, p. 12 ("95)
Calgary, p. 17 ("95)
Edmonton, p. 4 ("95)
Edmonton, p. 7 ("93)
Edmonton, p. 4 ("95)
Edmonton, p. 6 ("95)
INDEX TO HEADINGS AND SUBHEADINGS
Page No.
| THE PLAINTIFF"S CLAIM 1 |
| THE PARTIES 3 |
| PRELIMINARY PROCEEDINGS 5 |
| THE TESTIMONY 9 |
| 1) ON BEHALF OF THE PLAINTIFF 9 |
| 2) ON BEHALF OF THE DEFENDANTS 14 |
| 3) EVALUATION OF TESTIMONY 22 |
| 4) CRITICAL DOCUMENTARY EVIDENCE 28 |
| a) Early Publications in the Edmonton Region 28 |
| b) The Guidas in General 35 |
| c) The Alberta Directories 41 |
| ISSUES 49 |
| 1) COPYRIGHT ISSUES 49 |
| 2) PASSING OFF 50 |
| 3) REMEDIES 50 |
INDEX TO HEADINGS AND SUBHEADINGS (cont"d)
Page No
| RELEVANT PROVISIONS OF COPYRIGHT ACT 50 |
| ANALYSIS 51 |
| 1) INTRODUCTION 51 |
| 2) THE SUBSISTENCE AND OWNERSHIP |
| OF COPYRIGHT 56 |
| a) The Guidas as a Whole 56 |
| b) The Telephone Listings 60 |
| c) The Block Advertisements 63 |
| 3) OWNERSHIP OF COPYRIGHT 67 |
| 4) INFRINGEMENT 68 |
| a) Introduction 68 |
| b) The Guidas as a Whole 71 |
| c) The Telephone Listings 73 |
| d) The Block Advertisements 76 |
| e) The Infringers 78 |
| PASSING OFF 83 |
| REMEDIES 87 |
| 1) A PERMANENT INJUNCTION 87 |
| 2) DAMAGES AND/OR PROFITS, |
| DELIVERY-UP AND PUNITIVE DAMAGES 92 |
| INDEX TO HEADINGS AND SUBHEADINGS (cont"d) |
Page No.
| COSTS 93 |
| APPENDIX A 94 |
| APPENDIX B 98 |
| APPENDIX C 99 |
__________________
1 My difficulties in this regard were, to some extent, relieved by the acknowledgements during argument by counsel for the defendants that Il Nuovo Mondo Publishing Inc. was the publisher of the 1994 Directory and 656501 Alberta ltd. was the publisher of the 1995/96 Directory. (Transcript, pages 1041 and 1042.)
2 (1996), 118 F.T.R. 299 at 301.
3 Transcript, pages 1101 and 1102.
4 Exhibits C 1 and C 2 filed the 11th of June, 1998, as "evidence". See pages 621 to 625 of the transcript; 11 June, 1998.
5 R.S.C. 1985, c. T-13 (as amended).
6 R.S.C. 1985, c. C.-42 (as amended to the date of publication of the 1994 Alberta Directory).
10 Transcript, Volume 5 - page 1034.
11 [1985] 1 W.W.R. 112 (B.C.S.C.), at p. 116.
12 (1991), 499 U.S. 340 at 379-80.
See, for example: Hager v. ECW Press Ltd. et al, December 21, 1998, Court File: T-9-98, paragraph [66] at page 33 (F.C.T.D.) (Not cited before me) where Madame Justice Reed wrote:
The Court of Appeal made in 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.
13 (1988), 23 C.P.R. (3d) 52 (O.H.C.J.).
15 (1995), 62 C.P.R. (3d) 257 (F.C.T.D.).
16 13th ed., London; Sweet & Maxwell, 1991.
19 (1978), 40 C.P.R. (2d) 164 (F.C.A.).
20 See, for example: Painblanc v. Kastner et al. (1994), 58 C.P.R. (3d) 502 (F.C.A.); Paula Lishman Ltd. et al. v. Erom Roche Inc. et al. (1997), 72 C.P.R. (3d) 214 (F.C.T.D.); and Norac Systems International Inc. v. Prairie Systems and Equip. Ltd.(1997), 72 C.P.R. (3d) 303 (F.C.T.D.).
21 R.S.C. 1985, c. T-13 (as amended).
23 The reference to the MacDonald decision is to MacDonald et al v. Vapor Canada Ltd., [1977] 2 S.C.R. 134.
See Justice Robert J. Sharpe, with Justice Thomas A. Cromwell, Injunctions and Specific Performance, looseleaf ed., Toronto: Canada Law Book Inc. 1992 at " 1(2) 1.20, where the authors write:
The most common form of injunction is the prohibitive order which restrains the defendant from committing a specified act. [emphasis added]