A-831-82
The Queen (Appellant) (Plaintiff)
v.
James Lorimer and Company Limited (Respond-
ent) (Defendant)
Court of Appeal, Heald, Mahoney and Ryan JJ.—
Ottawa, November 29, 1983 and January 5, 1984.
Copyright — Government publication — Infringed by pri
vate sector publisher — Fair dealing defence rejected — Trial
Judge finding deliberate infringement for commercial gain —
Refusing to grant Crown injunction, exemplary damages and
costs — Crown characterized as "unusual plaintiff' —
Awarding Crown 8% royalty re future sales of infringing work
and damages re past sales — Judge dismissing counterclaim
for damages re communications by Attorney General with
sellers of infringing work — Appeal allowed, cross-appeal
dismissed — Market-place competition not necessary for
infringement — Where infringement, copyright owner prima
fade entitled to injunction — No necessity to prove damages
— Legislation not contemplating compulsory licence — Man
datory injunction for delivery up of infringing work — Not
proper to grant injunction for reacquisition of copies distribut
ed — Exemplary damages could have been awarded — Trial
Judge not clearly erring in exercising discretion to refuse —
No basis for denial of costs — Trial Judge correct in rejecting
freedom of expression Charter argument and defence of public
interest — Copyright Act, R.S.C. 1970, c. C-30, ss. 11,
17(1),(2)(a), 20(1),(2) and 21 — Combines Investigation Act,
R.S.C. 1970, c. C-23, ss. 7(1), 18(1).
Practice — Costs — Crown successful in copyright infringe
ment action — Trial Judge exercising discretion in denying
costs — Stating not "a case where the defendant needs to be
punished ... by the assumption of the costs that would nor
mally follow" — Discretion as to costs to be exercised judi
cially — Purpose of costs not to punish unsuccessful party —
Reasons given for denying costs having nothing to do with case
— No basis for refusal of costs — Appeal allowed — Copy
right Act, R.S.C. 1970, c. C-30, s. 20(2).
Damages — Exemplary or punitive — Action by Crown for
copyright infringement of Government publication — Trial
Judge referring to defendant's "blatant disregard" of copy
right laws but not awarding exemplary damages — Facts
within Rookes v. Barnard — Judge not clearly erring in
exercising discretion to refuse.
Constitutional law — Charter of Rights — Freedom of
expression — As defence to action for copyright infringement
of Government publication — No merit in defence where
infringing work containing little of defendant's own thought,
belief, opinion or expression — Canadian Charter of Rights
and Freedoms, being Part I of the Constitution Act, 1982,
Schedule B, Canada Act 1982, 1982, c. 11 (U.K.), ss. 1, 2(b).
A statement of evidence prepared for the Restrictive Trade
Practices Commission by the Director of Investigation and
Research under the Combines Investigation Act was published
under the title The State of Competition in the Canadian
Petroleum Industry. The work consisted of seven volumes and
the set was priced at $70. It was the subject of Crown copy
right. A single volume infringing work was published by James
Lorimer and Company Limited. It was offered for sale at
$14.95 retail. Although the Trial Judge found that there had
been deliberate infringement for commercial gain and rejected
the defence of fair dealing, the Crown was denied the relief
claimed: an injunction and exemplary damages. Nor did the
Judge award costs. The judgment provided for payment to the
Crown of an 8% royalty with respect to future sales of the
infringing work together with damages, at the same rate, in
respect of copies already sold. The Crown was characterized as
an "unusual plaintiff' in not being "greatly interested in
income or revenue from this work". It was further said in the
judgment that the defendant's publication did not adversely
affect sales of the original work. It was for these reasons that
injunctive relief was not granted. The Crown appealed. Lorimer
cross-appealed the dismissal of its counterclaim for damages
arising out of communications between the Attorney General
and those selling the infringing work.
Held, the appeal should be allowed and the cross-appeal
dismissed with costs at trial and upon appeal.
i
The Act is clear. If an infringer does something that the
copyright owner alone may do, there is infringement regardless
of whether or not this results in competition in the market
place. Once infringement has been established, the copyright
owner is prima facie entitled to an injunction restraining
further infringement. That the copyright owner has suffered no
damages is no basis for refusing an injunction. There was no
authority for requiring a copyright owner to acquiesce in a
continuing infringement against payment of a royalty. The
relevant legislation made no provision for what would amount
to a compulsory licence. The Trial Judge accordingly erred in
law in declining to permanently enjoin the defendant from
reproducing substantial portions of the plaintiff's work and in
refusing to grant a mandatory injunction requiring delivery up
of the production plates and of all copies of the infringing work
in the defendant's possession or control. It would not, however,
be proper for the Court to grant a mandatory injunction
requiring the defendant to reacquire all copies distributed for
sale since it would not be entirely within the defendant's power
to comply with such order.
In view of the reference in the judgment to the defendant's
"blatant disregard" of the copyright laws, one might have
anticipated an award of exemplary damages. The facts of the
instant case appeared to fall within the second category enun
ciated by Lord Devlin in Rookes v. Barnard et al., [1964] A.C.
1129 (H.L.). Exemplary damages could have been awarded.
But while it was difficult to reconcile the language of the
reasons for judgment with the conclusion not to award such
damages, it could not be said that the Trial Judge had clearly
erred in the exercise of his discretion.
Although the matter of costs was in the absolute discretion of
the Court, that discretion had to be exercised judicially. The
time was long past when the Crown, in accordance with the
"rule of dignity" neither asked nor paid costs. None of the
reasons given for denying costs herein had anything to do with
the case. The Crown had a clear right of action, the subject-
matter was not trivial and the plaintiff was successful at trial.
There was no basis for a denial of costs.
The Trial Judge was quite correct in rejecting the defences of
fair dealing and public interest as well as the Charter argument
concerning freedom of expression.
CASES JUDICIALLY CONSIDERED
APPLIED:
Donald Campbell and Company Limited v. Pollack,
[1927] A.C. 732 (H.L.).
DISTINGUISHED:
Hubbard et al. v. Vosper et al., [1972] 2 Q.B. 84 (Eng.
C.A.); Beloff v. Pressdram Limited et al., [1973] R.P.C.
765 (Ch.D.).
CONSIDERED:
Time Incorporated v. Bernard Geis Associates, et al.
(1968), 293 F.Supp. 130 (S.D.N.Y.).
REFERRED TO:
Massie & Renwick, Limited v. Underwriters' Survey
Bureau Limited et al., [1937] S.C.R. 265; Bouchet v.
Kyriacopoulos (1964), 45 C.P.R. 265 (Ex. Ct.); appeal
dismissed, [1966] S.C.R. v; Dominion Manufacturers
Limited v. Electrolier Manufacturing Company Limited,
[1939] Ex.C.R. 204; Underwriters' Survey Bureau Lim
ited v. Massie & Renwick Limited, [1942] Ex.C.R. 1;
Rookes v. Barnard et al., [1964] A.C. 1129 (H.L.);
Paragon Properties Ltd. v. Magna Investments Ltd.
(1972), 24 D.L.R. (3d) 156 (Alta. C.A.); Netupsky et al.
v. Dominion Bridge Co. Ltd. (1969), 58 C.P.R. 7
(B.C.C.A.).
COUNSEL:
D. Sgayias and M. Ciavaglia for appellant
(plaintiff).
B. C. McDonald and C. Trethewey for
respondent (defendant).
SOLICITORS:
Deputy Attorney General of Canada for
appellant (plaintiff).
Hayhurst, Dale & Deeth, Toronto, for
respondent (defendant).
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This is an appeal and cross-
appeal from a judgment of the Trial Division
[dated April 30, 1982, T-2216-81, not reported]
which found the respondent had infringed the
appellant's copyright in a certain work but denied
the appellant costs as well as the injunctive relief
and exemplary damages sought and dismissed the
respondent's counterclaim without costs. The
learned Trial Judge found that the Crown owned
the copyright in its work (Appeal Book, page 142,
lines 1 and 2). He rejected the defences of fair
dealing, violation of Charter freedoms and public
interest (page 159, line 24 to page 160, line 2). He
characterized the infringing work as an abridge
ment (page 144, line 5) and the respondent's con
duct as deliberate (page 159, lines 13 to 24) and a
"blatant disregard" of the appellant's rights (page
164, lines 23 to 26). The infringement was done
for a "primarily commercial" purpose (page 150,
lines 28 and 29). It is agreed the appellant suffered
no economic loss. The findings of fact by the
learned Trial Judge are amply supported by the
evidence and are not to be disturbed.
The Copyright Act' provides:
11. Without prejudice to any rights or privileges of the
Crown, where any work is, or has been, prepared or published
by or under the direction or control of Her Majesty or any
government department, the copyright in the work shall, sub
ject to any agreement with the author, belong to Her Majesty
' R.S.C. 1970, c. C-30.
and in such case shall continue for a period of fifty years from
the date of the first publication of the work.
The work subject of the Crown copyright here is a
report entitled The State of Competition in the
Canadian Petroleum Industry. The content of the
work is the statement of evidence prepared by the
Director of Investigation and Research under the
Combines Investigation Act, 2 submitted to the Re
strictive Trade Practices Commission pursuant to
subsection 18 (1) of that Act ensuing upon an
inquiry instituted on application under subsection
7(1). The appellant caused the 1748-page work to
be published in seven volumes and offered for
public sale at $70 a set, $10 a volume. (Exhibit
A-1.)
The respondent's infringing work is an abridge
ment of the Crown's work consisting, in the words
of its publisher's introduction, of:
... the full text of Volume I—the findings and recommenda
tions of the Director regarding the oil industry, together with
much of the supporting discussion and information from
Volumes II-VI. In the interests of keeping this volume to a
reasonable length, some of the more technical sections have
been omitted. But conclusions and summaries from all sections
of the report have been reprinted ....
In this volume, the original volume, chapter and section
heads from the full report have been retained, as have their
letter and numerical designations.
Footnote numbers from the original report have been
retained. Readers wishing to obtain footnote references can
find them in Volume VII of the full report.
The infringing work, a single, 626-page volume,
was retailed at $14.95. (Exhibits A-2 and A-3.)
Dealing first with the appeal, the first point in
issue is the refusal to grant the relief sought, which
was:
(a) a permanent injunction enjoining and restraining the
Defendant company, its officers, servants, agents and
employees from producing or reproducing substantial por
tions of the Report of Robert J. Bertrand, Q.C., Director
of Investigation and Research, Combines Investigation
Act, entitled "The State of Competition in the Canadian
Petroleum Industry" in a book entitled "Canada's Oil
Monopoly" or in any other form whatsoever;
(b) a mandatory injunction requiring the Defendant company,
its officers, servants, agents and employees to immediately
deliver up to the Plaintiff all plates used or intended to be
2 R.S.C. 1970, c. C-23.
used for the production of the book entitled "Canada's Oil
Monopoly";
(c) a mandatory injunction requiring the Defendant company,
its officers, servants, agents and employees to immediately
deliver up to the Plaintiff all copies of the book entitled
"Canada's Oil Monopoly" which are presently in its
possession or control;
(d) a mandatory injunction requiring the Defendant company,
its officers, servants, agents and employees to reacquire all
copies of the book entitled "Canada's Oil Monopoly"
which have been distributed for retail or wholesale sale or
distribution and to immediately deliver up said copies to
the Plaintiff;
(e) an accounting of all monies received by the Defendant
company from the publication and sale of the book entitled
"Canada's Oil Monopoly" and payment over to the Plain
tiff of the resulting profits from such publication and sale;
(f) exemplary damages;
As to (d), I know of no precedent for such an
order. It was obviously intended to require recov
ery of copies no longer within the defendant's
control as copies within its control were covered by
(c). Compliance with such an order would not be
entirely within the power of the person to whom it
is directed. A prudent infringer might well attempt
to do just that to reduce his exposure to damages
but I do not think it a proper order by the Court
and will not refer to it further. The claim for relief
in paragraph (e) was withdrawn at trial. That
claimed in paragraphs (a), (b), (c) and (f) was
refused and, instead, a royalty of 8% of the retail
selling price of the infringing work was awarded in
respect of future sales and damages of $3,192.12,
calculated on the basis of 8% of their retail selling
price, awarded in respect of sales prior to
judgment.
The learned Trial Judge, after reviewing the
evidence, found [at page 20 of the reasons for
judgment]:*
All of that seems to confirm that Mr. Lorimer knew and acted
at all times in a manner consistent with a person who knew that
what he was doing was on the face of it an infringement of the
plaintiff's copyright, and that he should either secure the
consent or permission of someone to go ahead with it or expect
to negotiate some kind of licence or royalty, and I therefore
* Judgment was delivered orally from the bench. I have
taken the liberty of correcting obvious typographical and spell
ing errors in the transcript.
conclude that, if the copyright laws are to mean anything, then
this defendant ought not to have done what it did in publishing
this report in the form it did without the consent of the
plaintiff.
(Appeal Book, page 159)
In denying exemplary damages and substituting
what is, in effect, a compulsory licence for the
injunctive relief, the learned Trial Judge said [at
pages 21-23]:
Turning to remedies, I have found against the defendant on
the basis that Mr. Lorimer, it seems to me, could have avoided
the grief that visited him in this matter by the simple expedient
of at least making some effort to secure permission before
publication. He might be in a different position before this
Court if he had demonstrated that he indeed did not assume
that he would be tied in a bureaucratic tangle but rather at
least offered to put his abridgement or proposed abridgement
before someone who would have the opportunity to approve it,
to authorize it, or license it or refuse it. But there was no
evidence put forward of any effort in that regard on the part of
Mr. Lorimer or any representative of his company. To that
extent, therefore, he is the author of his own misfortune and
that of his company in failing simply to take the expedient of
attempting to secure authority which at least on the basis of
Mr. Bertrand's evidence might very well have been forthcoming
in some form or other. Furthermore, it might very well have
been forthcoming in the form of what he described as a
non-exclusive arrangement which might not have cost him
anything.
On the other hand, I cannot overlook the fact that, by acting
in the way that he did, he abrogated [sic] to himself what was
in effect an exclusive right to publish an official abridgement of
this report and, as such, was acting entirely in disregard of the
copyright laws.
In terms of remedy, the plaintiff does not seek any account
ing profits. I am relieved, therefore, of the burden of examining
into the profit and loss information of the defendant company. 1
do not think that justice is served by having this Court attempt
or either of the parties attempt at this time to withdraw from
circulation or from publication a further distribution of copies
of this work. It is not a situation, in other words, of the
plaintiff's original work in its distribution or sale that the fact
the plaintiff's economic position is adversely affected. Obvious
ly, we have circumstances which mitigate the infringement of
copyright to some extent. In the first place, the Crown is an
unusual plaintiff and really is not greatly interested in income
or revenue from this work. It could never approach the cost of
the inquiry which ran for several years and undoubtedly cost
many millions of dollars. The printing cost associated with the
work was set upon the evidence by a very rough gauge to
somehow cover printing costs which, I am sure, did not take
place. So, the importance of the revenue or the significance of
the revenue to this plaintiff is very minimal. Furthermore, I
repeat that the defendant's publication did not then and cer
tainly now is not having any adverse effect on further distribu
tion or sales of the plaintiffs original work and, therefore, I see
no purpose in ordering a recall or injunction by enjoining the
defendant from further sales of this work at this time.
It not being, therefore, a situation in which the plaintiff
should be compensated or even seeks compensation in the sense
of loss of revenues from the sale of its own work, and not being
one where I feel at this time the distribution of the plaintiffs
work is adversely affected by the presence of the defendant's
work in the market-place, that injunction is not a proper
remedy.
Again turning to the essential element of the defendant's
transgression of the civil law, it is that it went ahead and did
without seeking permission what it, in my opinion, either knew
or should have known could not be done properly without
permission or could not be done without some consequences
without permission. It is, in my opinion, therefore, an appropri
ate case for compensation not by way of injunction or damages
either exemplary or punitive, but rather by way of royalty.
(Appeal Book, pages 160 ff.)
The pertinent provisions of the Act are:
17. (1) Copyright in a work shall be deemed to be infringed
by any person who, without the consent of the owner of the
copyright, does anything that, by this Act, only the owner of
the copyright has the right to do.
20. (1) Where copyright in any work has been infringed, the
owner of the copyright is, except as otherwise provided by this
Act, entitled to all such remedies by way of injunction, dam
ages, accounts, and otherwise, as are or may be conferred by
law for the infringement of a right.
21. All infringing copies of any work in which copyright
subsists, or of any substantial part thereof, and all plates used
or intended to be used for the production of such infringing
copies, shall be deemed to be the property of the owner of the
copyright, who accordingly may take proceedings for the recov
ery of the possession thereof or in respect of the conversion
thereof.
In exercising his discretion to refuse the injunc-
tive relief, the learned Trial Judge found persua
sive the facts that the infringement had not
adversely affected distribution and sales of the
appellant's infringed work nor adversely affected
the revenue deriving from its sales as well as the
unusual character of the appellant as a plaintiff.
The characterization of the Crown as an "unusual
plaintiff" lies, I take it, in his finding of fact that it
was not much interested in income or revenue
from its work and not, I trust, in a generalization
that the Crown is to be treated differently than
other litigants.
The Act is clear. Infringement does not require
that the infringing work compete in the market
place with that infringed; it requires only that the
infringer do something that the copyright owner
alone has the right to do. It follows that, where
infringement of copyright has been established, the
owner of the copyright is prima facie entitled to an
injunction restraining further infringement. It like
wise follows that, where the infringing work is
found to include any substantial part of a work in
which copyright subsists, the copyright owner is to
be deemed owner of all copies of the infringing
work and all production plates and is prima facie
entitled to the assistance of the Court in gaining
possession of them. The onus is on the infringer to
establish grounds upon which the Court may prop
erly exercise its discretion against granting such
relief.' Those grounds must lie in the conduct of
the copyright owner, not in the conduct or motives
of the infringer. The fact that the copyright owner
has suffered no damages as a result of the infringe
ment is not a basis for refusing an injunction. 4
A computation of damages based on an appro
priate royalty is acceptable where the copyright
owner does not prove he would have made the
sales the infringer did. 5 However, I find no author
ity for requiring a copyright owner to acquiesce in
a continuing infringement against payment of a
royalty. That is tantamount to the imposition of a
compulsory licence. In the absence of legislative
authority, the Court has no power to do that.
I am of the opinion that the learned Trial Judge
applied wrong principles and erred in law in deny
ing the relief sought in paragraphs (a), (b) and (c)
of the prayer for relief and substituting for that
relief a royalty on the future sale of infringing
copies.
' Massie & Renwick, Limited v. Underwriters' Survey
Bureau Limited et al., [1937] S.C.R. 265.
^ Bouchet v. Kyriacopoulos (1964), 45 C.P.R. 265 (Ex. Ct.);
appeal dismissed, [1966] S.C.R. v.
Dominion Manufacturers Limited v. Electrolier Manufac
turing Company Limited, [1939] Ex.C.R. 204.
The question of exemplary damages is more
difficult. In addition to what has already been
quoted, the learned Trial Judge [at page 25] cha
racterized the respondent's conduct as a "blatant
disregard of what was obviously the right of the
plaintiff under our copyright laws ...". (Appeal
Book, page 164.) He also found [at page 11] that
"the defendant's purpose was primarily commer
cial" (page 150). Taken as a whole, the findings of
fact are expressed in terminology that would lead
one to think that an award of exemplary damages
was in the offing.
While exemplary damages are not specifically
mentioned as an available remedy in the Copyright
Act, they are not excluded by subsection 20(1),
and it is well established that they are, in appropri
ate circumstances, available. 6 I see no reason why
appropriate circumstances should be different in
the case of copyright infringement than in the case
of any other civil invasion of another's rights. I
also see no reason in this case to express a settled
view on whether the applicable principle in this
Court is that enunciated by Lord Devlin in Rookes
v. Barnard et al.,' or that which appears to have
been more generally accepted by provincial courts
of appeal as enunciated, for example, by Clement
J.A., in Paragon Properties Ltd. v. Magna Invest
ments Ltd. 8 In my opinion, the facts here do bring
this matter within Lord Devlin's second category
and, on application of either principle, exemplary
damages could have been awarded.
In Netupsky et al. v. Dominion Bridge Co.
Ltd., 9 Taggart J.A., for the Court, in sustaining a
refusal of exemplary or punitive damages, held:
I consider it sufficient to say that in this case I find
absolutely no justification for such an award. I can find no
fraud, malice, violence, cruelty, insolence or contemptuous
disregard for the appellant's rights on the part of the
respondent.
6 E.g. Underwriters' Survey Bureau Limited v. Massie &
Renwick Limited, [ 1942] Ex.C.R. 1.
' [1964] A.C. 1129 (H.L.), at pp. 1221 ff.
s (1972), 24 D.L.R. (3d) 156 (Alta. C.A.), at p. 167.
9 (1969), 58 C.P.R. 7 (B.C.C.A.), at p.42.
The grounds for refusing exemplary damages,
unlike the grounds for refusing injunctive relief,
are to be found in the conduct and motives of the
infringer.
The absence of economic injury and the "unu-
sual" nature of the Crown as a plaintiff are not
good reasons to deny the Crown exemplary dam
ages. The language of the reasons for judgment is
difficult to reconcile with the conclusion that this
is not an appropriate case for exemplary damages.
It is manifest that the learned Trial Judge, not
withstanding his characterization of the unques
tionably deliberate infringement, motivated by the
respondent's marketing considerations, as "bla-
tant", did not find it warranted punishment, nor
did he see deterrence as a desirable object. It
cannot be said that he clearly erred in so exercis
ing his discretion and I do not feel it open to
substitute my view of such an infringement for his.
In denying the appellant costs, the learned Trial
Judge had the following to say [at pages 24-25]:
Turning to the question of costs, I am not going to award
costs, which would normally follow the event, and I have given
that very extensive thought. The Crown has been justified in its
pursuit of the interpretation of the copyright law as it applies to
his position and has been successful. The defendant in infring
ing the copyright law here, as I have said repeatedly, did
without permission what it should have known required permis
sion. However, it did not unfairly deal with the work, put
together a fair abridgement of it, and that is upon all of the
evidence, and now having been put in a position of paying the
royalties that it would have on its own evidence expected to pay
if it had got the permission, I don't feel it is a case where the
defendant needs to be punished beyond that point by the
assumption of the costs that would normally follow such a
judgment.
Here again I allude to the unusual position of the plaintiff in
this matter, being the Crown. Of course, there are a number of
elements that are singular to this case. In the ownership of this
work, in the protection of it, it is, after all, somewhat extraordi
nary that we are dealing here with the protection of copyright
in a work which is the obligation of the owner, and the owner
does so, but it is its obligation to see that it receives the widest
possible dissemination and, in concluding that the defendant in
this matter went about without permission to publish a version
that would be more accessible to the public, he was vindicated
in that judgment by the number of purchases that would indeed
have been higher had the legal difficulties not intervened, and
also that the defendant did a fair abridgement of the work and,
finally, that perhaps the treatment that I have given to the costs
in the matter can be taken as a reflection that the defendant
can at least partially be forgiven for assuming, because of the
public nature of the document involved, that the stance in
respect of copyright would be somewhat less stringent than
would be expected in a private work.
I have said again and again that does not excuse the defend
ant for its blatant disregard of what was obviously the right of
the plaintiff under our copyright laws, but I think it is a
situation in which the Crown is able, without adversity, to bear
its own costs and that I think it is a proper circumstance to
allow a proper case to not further burden the defendant in this
matter by bearing the costs of both parties.
(Appeal Book, pages 163 ff.)
The Copyright Act provides:
20....
(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.
That absolute discretion is, nevertheless, to be
exercised judicially. In Donald Campbell and
Company Limited v. Pollack, 10 Viscount Cave
L.C., in a frequently-quoted speech, said:
A successful defendant in a non-jury case has no doubt, in the
absence of special circumstances, a reasonable expectation of
obtaining an order for the payment of his costs by the plaintiff;
but he has no right to costs unless and until the Court awards
them to him, and the Court has an absolute and unfettered
discretion to award or not to award them. This discretion, like
any other discretion, must of course be exercised judicially, and
the judge ought not to exercise it against the successful party
except for some reason connected with the case. Thus, if—to
put a hypothesis which in our Courts would never in fact be
realized—a judge were to refuse to give a party his costs on the
ground of some misconduct wholly unconnected with the cause
of action or of some prejudice due to his race or religion or (to
quote a familiar illustration) to the colour of his hair, then a
Court of Appeal might well feel itself compelled to intervene.
But when a judge, deliberately intending to exercise his discre
tionary powers, has acted on facts connected with or leading up
to the litigation which have been proved before him or which he
has himself observed during the progress of the case, then it
seems to me that a Court of Appeal, although it may deem his
reasons insufficient and may disagree with his conclusion, is
prohibited by the statute from entertaining an appeal from it.
The respondent, defending the denial, was able to
rely only on a literal application of subsection
20(2).
It is trite law that costs are not awarded to
punish an unsuccessful party. There was a time
when the "rule of dignity" dictated that the Crown
o [1927] A.C. 732 (H.L.), at pp. 811-812.
neither asked nor paid costs in the ordinary course
of events. That time is long past and the position of
the Crown, even if it be "unusual", is no more
relevant than the colour of a litigant's hair. With
respect, none of the reasons given for denying the
appellant costs have anything to do with the case
nor any facts connected with it or leading up to it.
I say that specifically of any assumption the
respondent may have felt entitled to make as to the
appellant's reaction to the infringement. An inno
cent invasion of another's rights may be a different
matter but I fail to see that a deliberate invasion in
the expectation that the aggrieved party will
acquiesce is a fact justifying an exercise of discre
tion to the detriment of the aggrieved party.
The appellant had a clear right of action; nei
ther it nor its subject-matter were trivial. The
Attorney General proceeded in this Court immedi
ately, expeditiously and economically. The appel
lant was entirely successful at trial in all respects
but obtaining a remedy the law provided. There
was no proper basis for a judicial exercise of
discretion denying the appellant costs.
The cross-appeal is concerned with defences
raised by the respondent and rejected at trial and
with the dismissal of the counterclaim. The first
defence was that of fair dealing. The Act provides:
17....
(2) The following acts do not constitute an infringement of
copyright:
(a) any fair dealing with any work for the purposes of private
study, research, criticism, review, or newspaper summary;
The respondent says its abridgement was a fair
dealing for the purposes of review. After consider
ing the authorities, the learned Trial Judge con
cluded [at page 11] that such fair dealing
. requires as a minimum some dealing with the work other
than simply condensing it into an abridged version and repro
ducing it under the author's name.
(Appeal Book, page 150)
The Trial Judge was right.
The second defence was that of public interest
which is posed in the respondent's memorandum of
fact and law in the following terms:
Did the Respondent's publication further the disclosure to the
public of facts and material relating to alleged misdeeds or
other matters of a serious nature that are of importance to the
country and to the public's welfare, such that the defence of
public interest applies on the facts of this particular case?
Three copyright decisions were cited in support of
the defence.
In Hubbard et al. v. Vosper et al." the alleged
copyright infringement involved confidential docu
ments of the Church of Scientology and, in Beloff
v. Pressdram Limited et al., 12 the work subject of
copyright was an unpublished document. Both deal
with public interest in the context of information
that ought to be public and is not, which is certain
ly not the situation here. The learned Trial Judge
found [at page 19]:
The extent of the disclosure in the report was very great. There
was no suggestion that the public was suffering under any
deprivation on the part of the authors of this report or those
responsible for its distribution. Free copies were given out in
very large numbers, put in libraries across the country and,
therefore, there is not in the circumstances of this case any
justification that relates to some concern that the public might
not be fully informed of the subject-matter of this inquiry.
Furthermore, it seems to me that Mr. Lorimer knew that.
(Appeal Book, page 158)
I have no doubt that a defence of public interest
as enunciated in the English cases is available in
proper circumstances against an assertion of
Crown copyright. However, the facts here do not
support its application and the learned Trial Judge
was right to reject it.
In Time Incorporated v. Bernard Geis Associ
ates, et al., 13 a United States District Court held
that reproduction, in a book dealing with the
assassination of President Kennedy, of individual
frames of the plaintiffs copyrighted motion pic
ture film of the assassination constituted a "fair
" [1972] 2 Q.B. 84 (Eng. C.A.).
12 [1973] R.P.C. 765 (Ch.D.).
13 (1968), 293 F.Supp. 130 (S.D.N.Y.), pp. 144 ff.
use" outside the limits of copyright protection.
This is not a "public interest" case in the same
sense as the English decisions nor, really, in the
sense the defence was advanced here. Rather the
U.S. Court applied an equitable doctrine similar in
scope to the statutory defence of fair dealing
already discussed. The judgment deals at some
length with legislation then before Congress
proposing to codify the doctrine.
The third defence was based on the Canadian
Charter of Rights and Freedoms [being Part I of
the Constitution Act, 1982, Schedule B, Canada
Act 1982, 1982, c. 11 (U.K.)], which provides:
1. The Canadian Charter of Rights and Freedoms guaran
tees the rights and freedoms set out in it subject only to such
reasonable limits prescribed by law as can be demonstrably
justified in a free and democratic society.
2. Everyone has the following fundamental freedoms:
(b) freedom of thought, belief, opinion and expression,
including freedom of the press and other media of
communication;
Again, I agree with the learned Trial Judge that
there is no merit in this defence. If, indeed, the
constraints on infringement of copyright could be
construed as an unjustified limitation on an
infringer's freedom of expression in some circum
stances, this is not among them. So little of its own
thought, belief, opinion and expression is contained
in the respondent's infringing work that it is prop
erly to be regarded as entirely an appropriation of
the thought, belief, opinion and expression of the
author of the infringed work.
Finally, the respondent appeals against dismissal
of its counterclaim. That was for damages
incurred as a result of the communications by the
Attorney General to those selling and distributing
the infringing work. It could not succeed unless the
appellant failed in its action. The appellant did not
fail. The counterclaim was properly dismissed.
I would allow the appeal and dismiss the cross-
appeal with costs here and in the Trial Division.
The judgment of the Trial Division should be
varied by striking out that part which ordered the
respondent to pay a royalty to the appellant; by
increasing the damages recoverable by the appel
lant by the amount of royalty paid or payable
under that judgment up to the date of judgment
herein and by granting the relief sought in para
graph (a), (b) and (c) of the prayer for relief. I
would propose that the appellant move for judg
ment under Rule 324 [Federal Court Rules,
C.R.C., c. 663] and that judgment not issue until
settled by the Court.
HEALS J.: I concur.
RYAN J.: I concur.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.