COURT FILE NO.: CV-09-385355
DATE: 20130815
ONTARIO
SUPERIOR COURT OF JUSTICE
BETWEEN:
MALCOLM RAINS
Plaintiff
– and –
LUCIAN BOGDAN MOLEA
Defendant
Marguerite Ethier and David Quayat, for the Plaintiff
Robert Rueter and Nastaran Roushan, for the Defendant
HEARD: June 10, 11, 12, 13, 14, 17, 18, 19, 20, 21, 2013
CHIAPPETTA J.
Overview
[1] Fundamental to the resolution of this case is the interpretation of the Copyright Act, R.S.C. 1985, c. C-42 (the “Act”). When interpreting the Act, courts must strive to strike a delicate “balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator ... The proper balance among these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature”: Théberge v. Galerie d’Art du Petit Champlain Inc., 2002 SCC 34, [2002] 2 S.C.R. 336, at paras. 30-31. In my view, given the facts in this case, the proper balance among these objectives is served by dismissing the plaintiff’s claim. These are my reasons.
Issues To Be Determined
[2] The plaintiff, Mr. Malcolm Rains (“Rains”), is a Canadian artist living and working in Toronto, Ontario. In 1991, he started creating a series of large oil paintings he titled the “Classical Series.” The paintings feature white crumpled paper in still life form on an undefined base against a dark background. The Classical Series, which spans more than 22 years, is Rains’ most important and memorable work. It currently encompasses over 200 works. Rains continues to expand the Classical Series.
[3] Every painting of the Classical Series embodies Rains’ dialogue between Greco-Roman mathematical design and the randomness of Asian influences. The crumpled paper form is created through spontaneity and chance. In an expression of irony, Rains names every Classical Series painting after a place in the Ancient Greek or Mediterranean world; the randomness is opposite to the precise geometry of Ancient Greek architecture.
[4] Rains claims that Mr. Lucian Bogdan Molea (“Molea”) has infringed his copyright in the Classical Series, contrary to the Act.
[5] Molea is a Romania-born artist who immigrated to Canada with his wife, who is also an artist, on December 22, 1999. They work together from a studio in their Toronto home. Prior to immigrating to Canada, Molea’s paintings did not feature crumpled paper in still life form. Rather, his paintings were of an expressionistic style and primarily emphasized human figuration, specifically the nude female form. Molea also emphasized floating structures and geometrical features. In 2000, Molea began painting realistic still life works featuring crumpled paper (collectively the “Molea crumpled paper works”). Molea’s interest in painting crumpled paper as a featured character stems from a previous pre-occupation of creating a virtual reality. He intends to render and analyze simple material in a way that creates drama through a process that is random, different, and explores light, shadow, and volume.
[6] If copyright subsists in the Classical Series as a whole and/or in its individual images therein, the key question for the court is whether the Molea crumpled paper works infringe Rains’ copyright, contrary to the Act. To answer this question, the court must address the following sub-issues:
Does copyright subsist in each image of the Classical Series and/or the Classical Series as a whole?
If copyright subsists, has it been infringed by the Molea crumpled paper works?
Did Molea have access to the work he allegedly infringed?
Was the copyrighted work the source for the alleged infringing work, or was the alleged infringing work created independently of the copyrighted work?
Does the applicable limitation period bar Rains’ claim?
If infringement is found, what is the appropriate remedy?
Analysis
1. Does copyright subsist in each image of the Classical Series and/or the Classical Series as a whole?
[7] Copyright subsists irrespective of registration. Section 5(1) of the Act vests copyright protection “in every original…artistic work”.
[8] Section 2 of the Act defines “artistic work” to include:
paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works.
[9] Section 2 (a) of the Act defines “compilation” to include:
(a) a work resulting from the selection or arrangement of ...artistic works or of parts thereof
[10] The relevant analysis therefore is whether (i) each image of the Classical Series is an original artistic work and/or (ii) the Classical Series as a whole is an original artistic work.
(i) Each image of the Classical Series
[11] The Act does not define the term “original.” In CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339, at para. 16, the Supreme Court of Canada defines this boundary of copyright as follows:
For a work to be “original” within the meaning of the Copyright Act, it must be more than a mere copy of another work. At the same time, it need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one’s knowledge, developed aptitude or practiced ability in producing the work. By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. For example, any skill and judgment that might be involved in simply changing the font of a work to produce “another” work would be too trivial to merit copyright protection as an “original” work.
[12] In my view, each image of the Classical Series is original as that term is defined by the Supreme Court of Canada. Each image originates from Rains and is not copied from another work. Every image is the product of Rains’ skill and judgment. Each Classical Series painting starts with Rains randomly crushing a large piece of water colour paper. From there, Rains considers the appropriate vantage point for engaging with the paper and starts painting the work. The whole process takes approximately two to three weeks, with works often 44 x 66 inches. Rains’ skill and judgment employed to create the final images are more than trivial and meet the originality test set out above.
[13] Molea’s expert, Mr. John Kissick (“Kissick”), is an expert on contemporary painting, instruction, existence and use of convention in contemporary painting, analysis and criticism of contemporary painting. Kissick's opinion is that the images of the Classical Series are not unique. Elements of the images of the Classical Series are common place and include tropes used frequently by painters for centuries. He points to the use of light and shade and Mediterranean titles for example. I accept the evidence of Kissick on this point. There are many elements of the images of the Classical Series that are not unique to Rains but rather have been admittedly influenced by great painters before him. This is not sufficient, however, to rebut the conclusion of originality. In its articulation of the originality test, the Supreme Court directed that the work need not be novel or unique. Rather"what is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment." The fact that in creating the images of the Classical Series Rains employed commonplace tropes used by painters for centuries does not render his individual images any less original; it acknowledges the reality of visual art in the use of skill and judgment to combine commonplace elements and influences into an original image.
[14] It is settled that copyright law protects the expression of ideas in works; it does not protect ideas in and of themselves (See: Moreau v. St. Vincent, 1950 248 (CA EXC), [1950] Ex.C.R. 198, at p.203). Molea submits that Rains is seeking to assert a copyright in the idea of painting a realistic image of crumpled white paper. He argues that the nature of the subject matter of realistic crumpled paper merges the idea in its possible expression. The merger doctrine emphasizes that "[i]f an idea can be expressed in only one or in a very limited number of ways, then copyright of that expression will be refused for it would give the originator of the idea a virtual monopoly on that idea. In such a case, it is said the expression merges with the idea and is thus not copyrightable" (See: Delrina Corp. (c.o.b. Carolian Systems) v. Triolet Systems Inc. (2002), 2002 11389 (ON CA), 58 O.R. (3d) 339 at para 48, [2002] O.J. No.676 (C.A.), leave to appeal refused, [2002] S.C.C.A. no. 189).
[15] In my view, the merger doctrine as expressed by the Ontario Court of Appeal is not applicable to the facts of this case. The dichotomy between an idea and the expression of an idea does not apply to a painting in the same way the Court of Appeal applies it to a function of a computer program. As will be discussed below, for different reasons and with different intentions, Rains and Molea both had the idea of painting a realistic image of crumpled paper. Their respective expressions of the idea are represented in the images themselves. The image is a product of diligent work. The artists spend hours exercising skill and judgment. They apply intellect and employ techniques learned through study, experience, talent, and influence to develop, explore, and perfect the expression of that idea in a painting. Both Rains and Molea repeatedly express the idea through images. Each image is a different expression and that expression, if original, is subject to copyright.
[16] For the reasons above, I conclude that each image of the Classical Series is original. The Act defines “artistic work” to include paintings. The images of the Classical Series are paintings. Copyright subsists therefore in each painting of the Classical Series.
(ii) The Classical Series as a whole
[17] The Act defines “artistic work” to include compilations of artistic works. In my view, the Classical Series is not a compilation as defined in the Act. There is no evidence that Rains exercised skill and judgment to select a crumpled paper image and arrange it with others in the Classical Series such that copyright subsists in the arrangement of the series itself. Rather, Rains chose a theme in 1991, a label for a series of paintings he intended to create to express his idea of painting still life crumpled paper. The label existed far before the many images he created; he also intends to add to the Classical Series by creating more images that properly fit within the theme. The Classical Series is not a complete independent work of carefully selected paintings. Rather, it is a label common to existing and future Rains paintings, each individually created to express his idea of painting a realistic image of crumpled white paper. There is no originality in the label itself; there is no skillful organizational aspect of the Classical Series that warrants protection for the series as a whole.
[18] In coming to this conclusion, I reject Rains’ submission that a “feeling or evocation” is common to all of his works sufficient to render the Classical Series a compilation. Rains argument is based on the visual appreciation of artistic works; a painting’s distinctive qualities that are difficult to articulate, he argues, but are immediately apparent to the observer. A lot of jurisprudence from Canada, the United States, and the United Kingdom was submitted in advance of this claim. Rains submitted no jurisprudence, however, in advance of this particular issue.
[19] I also reject the evidence on this issue of Rains’ expert, Ms. Karen Wilkin (“Wilkin”), who is an expert in the analysis and criticism of modern art. Wilkin defines “gestalt” as shorthand for all qualities that are difficult to articulate but that you recognize when you look at art. She states that it is much like an artist’s handwriting, discernible from visual clues. To illustrate her view of gestalt, Wilkin refers to Jackson Pollack’s practice of pouring paint on a large canvas. She states that the gestalt of a 17th-century French painting would be different from the gestalt of a 17th-century Italian painting. Wilkin’s characterization of Rains’ gestalt of the Classical Series includes clarity, crisp rendering, a high sense of illusionism, and an indeterminate sense of space in the work. She admits that “gestalt” is an imprecise term in relation to art history and that connoisseurship is not an exact science.
[20] I prefer the opinion of Kissick on this issue, who states that Wilkin uses the term “gestalt” to suggest an involuntary quality of artistic work that makes the work unique to its creator and that this is immediately apparent to an observer. He asserts that this position is increasingly untenable in the contemporary art world. The very idea of connoisseurship suggesting that some people feel more than others, he states, has little currency in contemporary art criticism and theory.
[21] Accordingly, I reject Rains’ submission that the Classical Series is a compilation because it evokes a feeling common to all his works, I conclude that the Classical Series is not a compilation as defined by the Act because “gestalt” or a “feeling” is insufficient to meet the test.
[22] Further, in my view it would be unwise to extend copyright protection to the visual perception of an artistic work, which is intangible and subjective. Copyright subsists in the expression of an idea in a fixed material form: CCH, at para. 8. There is good reason for this. The scale would be tipped in favour of the creator’s rights if copyright were to protect an undefined and unarticulated feeling emoted from artistic works. There would be little room for the public domain to flourish. Others would be unable to produce new artistic works without fear of infringing a creator’s self-imposed or critically-bequeathed imprecise evocation of his work’s feeling or expression. Moreover, the protection would often extend to works not yet created. This would be a perverse result considering the purpose of the Act as set out above.
[23] For the reasons above, I conclude that copyright does not subsist in the Classical Series as a whole.
2. If copyright subsists, has it been infringed by the Molea crumpled paper works?
[24] I have determined that copyright does not subsist in the Classical Series as a whole, but does subsist in each image of the Classical Series. I will therefore proceed to determine if the Molea crumpled paper works violate the copyright in the individual images of the Classical Series. Rains submits that each of the 17 comparisons set out in Schedule A to the Reasons for Judgment represent standalone examples of infringement (“the 17 comparisons”).
[25] Section 27(1) of the Act prohibits the infringement of copyright:
It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.
[26] Section 2(a) of the Act defines “infringement” to include:
(a) in relation to a work in which copyright subsists, any copy, including any colourable imitation, made or dealt with in contravention of this Act.
[27] Section 3(1) of the Act defines the rights that vest in a copyright holder to include:
For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof.
[28] Copyright infringement therefore is established when the defendant has produced a substantial copy, including a colourable imitation of the plaintiff’s work. Infringement is not limited to an exact copy.
[29] The Quebec Court of Appeal recently considered what is “substantial” in a work. In France Animation, s.a.c. Robinson, 2011 QCCA 1361, [2011] R.J.Q. 1415, at paras. 59 and 61 of the unofficial English translation, it states as follows:
First, it is not really a matter of quantity. Rather, it is a matter of quality, although both aspects remain important.
It goes without saying, moreover, that an infringing copy is assessed first by its similarities, since, for instance, the use of a known important character from a comic strip may be enough, even if there are numerous differences in the rest of the copy. Overall, the similarities make it possible to determine whether a substantial part of a work has been borrowed, while the differences could, for example, support a claim of independent creation.
[30] Accordingly, I must assess the similarities between the 17 comparisons. The 17 comparisons feature the use of crushed white paper against a dark or sometimes earth-tone background on an occasional lighter, indeterminate, or reflective flat base with, on one occasion, a Mediterranean title. The facts further indicate that these similarities are not unique to Rains; they are common, long-established artistic techniques. I conclude therefore that the similarities between the 17 comparisons are conventional tropes or artistic devices historically common among painters. While the similarities represent a substantial part of the respective works, they have no originality and therefore do not enjoy copyright protection. Because the common techniques are not capable of copyright protection, the plaintiff cannot rely on these similarities to establish copyright infringement.
[31] In coming to this conclusion, I have considered the expert evidence and Rains’ arguments. Rains’ expert opines that Molea’s works in Schedule A are substantially similar to Rains’ works. I reject her opinion on this issue primarily for the following the reasons:
(i) She did not see the original paintings of the 17 comparisons;
(ii) She did not assess the similarities of the 17 comparisons prior to trial;
(iii) She admitted she was unable to compare key qualities of the paintings based on reproductions and projections; and
(iv) When she did comment on the reproductions and projections of before 17 comparisons, as shown to her at trial, she admitted to many differences such as the amount of crumple, reflectivity, configuration, and shadow.
[32] Rains states that each of the 17 comparisons is sufficiently similar:
(i) At p. 1 of Schedule A, Rains’ “Laconia” from 1998 to Molea’s “Hero” from 2004: Rains states that both are crushed paper forms against dark backgrounds. In addition, they both have a pointed paper form that rises to the top vertical surface of the painting.
(ii) At p. 2 of Schedule A, Rains’ “Phasis” from 2004 to Molea’s “Butterfly” from 2004: Rains states that both are crushed paper forms against a dark background on a brownish base with the paper’s reflection in the base. In addition, the form in each painting is deformed in the middle to create a left-hand wing and right-hand wing.
(iii) At p. 3 of Schedule A, Rains’ “Olympia” from 1993 to Molea’s “Dove” from 2005: Rains states that both forms rise to a peak near the top edge of the painting. Both forms also have a curving right-hand edge that leads to the top.
(iv) At p. 4 of Schedule A, Rains’ “Arkadia” from 1998 to Molea’s “Arcades” from 2008: Rains states that both are crushed paper forms against a dark background on an indeterminate base.
(v) At p. 5 of Schedule A, Rains’ “Pharelon” from 2001 to Molea’s “Volare” from 2008: Rains states that both are crushed white paper against a dark background. Both paintings have a “V” shape coming to a point at the bottom horizontal edge of the painting. Molea also uses a Latin word for the title “Flight.”
(vi) At p. 6 of Schedule A, Rains’ “Lesbos” from 2000 again to Molea’s “Volare” from 2008: Rains states that each work similarly features a wing-shaped paper against a dark background.
(vii) At p. 7 of Schedule A, Rains’ “Tyre” from 2003 to Molea’s “Building With Light” from 2007: Rains states that both have a U-shaped form split in the middle with radiations indicative of a subconscious resonance.
(viii) At p. 8 of Schedule A, Rains’ “Etna” from 2005 to Molea’s “Dove” from 2005: Rains states that both use earth-tone backgrounds.
(ix) At p. 9 of Schedule A, Rains’ “Sicyon” from 2003 to Molea’s “3 D Balance” from 2003: Rains states that both are a crushed white paper form against a dark background on a base that reflects light coming from the top left and hitting the paper. Also, the shapes are similar.
(x) At p. 10 of Schedule A, Rains’ “Samothrace” from 1991 to Molea’s “White Shape on Burgundy” from 2002: Rains states that both are white shapes against a dark background on an indeterminate base with light sources originating from the top left. In addition, both shapes rise slightly towards the top of the painting.
(xi) At p. of 11 of Schedule A, Rains’ “Phasis” from 2004 to Molea’s “Sail” from 2007: Rains states that both are immediately recognizable as crushed paper shapes against darker backgrounds. In addition, both shapes are deformed in the center to create a left vertical shape and a rising shape.
(xii) At p. 12 of Schedule A, Rains’ “Thebes” from 2000 to Molea’s “Ascension” from 2005: Rains states that both exhibit large sheets of crushed white paper against a dark background. In addition, both shapes narrow down to a central point near the bottom edge of the canvas.
(xiii) At p. 13 of Schedule A, Rains’ “Sunium” from 2004 to Molea’s “La Nave” from 2006: Rains states that both forms similarly rise to a sharp peak near the painting’s top edge.
(xiv) At p. 14 of Schedule A, Rains’ “Parnassus” from 1992 to Molea’s “The Last Frontier” from 2007: Rains states that both are crushed white paper shapes against a dark background. They are both complex shapes.
(xv) At p. 15 of Schedule A, Rains’ “Argolidia No. 2” from 2000 to Molea’s “White Mantle” from 2004: Rains states that both exhibit a single sheet of crushed paper with upper left lighting that illuminates the highlights and creates shadows.
(xvi) At p. 16 of Schedule A, Rains’ “Patrae” from 2004 to Molea’s “Fiesta” from 2007: Rains states that both are a single sheet of crushed paper on an undefined base. In addition, each shape extends toward the painting’s top right edge.
(xvii) At p. 17 of Schedule A, Rains’ “Icaria” from 2000 to Molea’s “Turning Point” of 2005: Rains states that both are a single piece of crushed paper on an undefined base against a dark background with delineated shadows.
[33] Therefore, other than shape, Rains relies on the following elements to claim similarities exist among the 17 comparisons: the use of crushed white paper against a dark or sometimes earth-tone background on a lighter, horizontal, occasionally undefined or reflective flat base with, on one occasion, a Mediterranean title.
[34] Rains admits that many artists conventionally use earth-tone colours for background. Further, he admits that using a white object against a dark background is a method of creating what is known as the chiaroscuro effect, which is a common technique present in Rembrandt and Caravaggio works to create drama in painting.
[35] Kissick did not conduct an image-by-image analysis of the 17 comparisons. Rather, he examined generally the Rains and Molea works produced by Rains as part of the Statement of Claim. Kissick’s examination before trial included all 17 comparisons. In his opinion, there is nothing about Rains’ work that is unique in the artistic sense; although the Classical Series images are original works, they are thoroughly conventional. Crumpled paper has been employed as a model since the French Academy was founded in 1664. The use of Mediterranean titles is predictable and common when a painter wishes to imply an ironic meaning to an ambiguous subject matter. Painting crumpled paper on a flat surface to create illusion has been a practice for at least 200 years. Rains’ paintings are iconic compositions existing since the eighth century. Rains’ code is realism, a tradition established in 17th-century Holland. Rains’ use of a theatrical high contrast light source typically produces bright highlights on the paper while leaving much of the background in darkness. Kissick describes this technique as a standard painting device from the Baroque era.
[36] The works of Daniel Adel (“Adel”) further illustrate the commonality of the conventional techniques Rains uses to create expressions of realistic images of crumpled paper. Like Rains and Molea, Adel paints crumpled paper in still life form. Like Rains and Molea, Adel uses crushed white paper against a dark background on a lighter and sometimes indeterminate or reflective flat base with, on occasion, a Mediterranean title: See Schedule B to the Reasons for Judgment. Like Molea, Adel’s works came after Rains’ first crumpled paper image in 1991. Rains states that Adel’s work, like Molea’s work, improperly appropriates the gestalt of his Classical Series:
(i) “Danae” at p. 1 of Schedule B: Rains states this painting appropriates his gestalt because it features an image of crushed paper on a flat, horizontal, table-like base against a dark background and has a Mediterranean title.
(ii) “Phoenix” at p. 2 of Schedule B: Rains states this painting appropriates his gestalt because it is a piece of crushed white paper against a dark background with a Greek title. In addition, the outspread wing shape of the crushed paper duplicates the form from some of his paintings.
(iii) “Gitane” at p. 3 of Schedule B: Rains states this painting appropriates his gestalt because it is a crushed piece of white paper set against a dark background on a table-like base. In addition, the form’s curvilinear shape extending from the middle left to the top right duplicates the form in one of his works.
(iv) “Spartan” at p. 4 of Schedule B: Rains states this appropriates his gestalt because it has a Greek title and is a crushed white paper against a dark background.
(v) “Dervish II” at p. 5 of Schedule B: Rains states this appropriates his gestalt because Adel works with the abstract form of a crushed paper shape against a dark background.
(vi) “Bloom” at p. 6 of Schedule B: Rains states this appropriates his gestalt because it is an image of crushed white paper against a dark background.
(vii) “Articulation” at p. 7 of Schedule B: Rains states this appropriates his gestalt because it is an abstract crumpled white form set on a horizontal, table-like base against a dark background.
(viii) “Vigilant” at p. 8 of Schedule B: Rains states this appropriates his gestalt mainly because it is a crushed white paper shape against a dark background.
[37] Rains further states that he successfully prevented the artist, Brock Irwin (“Irwin”), from continuing to paint realistic images of crumpled paper. Irwin employed techniques conventional in art history. He painted crumpled paper against a dark background on a horizontal surface.
[38] In Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2000] 1 W.L.R. 2416 (H.L.), Lord Millett addressed the purpose of the similarity analysis at 2425:
[T]o judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas.
[39] Rains concedes that other painters before him used the common techniques (like Mediterranean titles and chiaroscuro) that he relies on to establish similarities between the 17 comparisons. He submits however that the use of non-novel elements is irrelevant as if their use were determinative, there would be no copyright in books as the words therein use the same 26 letters, and no copyright in music as all music uses the same eight notes. In my view, this analogy is misplaced and would apply only if Rains were suggesting that the use of oil paint on a canvas represents a sufficient similarity between the 17 comparisons.
[40] As set out above, copyright law does not require novelty in order to find a work original. However, Rains cannot establish infringement by relying on his use of the noted unoriginal, commonplace, historical painting techniques. This would be akin to Shakespeare relying on his use of iambic pentameter in his writing or Drake relying on his use of 16 bars to a verse in his music. Commonly used techniques must remain available to all artists creating literary, dramatic, musical, and artistic works. If the compilation of these techniques is original, as defined above, the work enjoys copyright protection. If, after disregarding the commonplace techniques, there remain sufficient similarities between one work and a preceding original, substantial copying will likely be established. Because Rains relies on unoriginal elements, other than shape, to demonstrate similarity, these elements do not establish substantial copying.
[41] In terms of Rains’ comment on the similar shapes in 13 of the 17 comparisons, I find that the shapes are not sufficiently similar so as to lead to an inference of copying. The similarities are more likely the result of coincidence rather than copying. Rains and Molea both crumple paper to create a model then a painting. Both agree there is randomness to the shapes created through the crumpling process. The randomness is limited however by the original pre-crumpled rectangular shape. As will be discussed in further detail below, the size and thickness of the paper differs among Rains and Molea. Nonetheless, the resultant crumpled shapes would in my view necessarily tend to resemble each other on occasion. The entire shape of the paper form is not aligned. Rather, on occasion the directional edges of the paper form seem to point in a likewise direction. This is coincidence resulting from chance inherent in the act of crumpling rectangular paper. Rains alleges that the shape of Molea’s 2008 “Volare” infringes two of his paintings, one from 1998 and one from 2001; this allegation further illustrates that the paper’s rectangular shape increases the likelihood of similar resultant crumpled shapes.
[42] I therefore conclude that Molea’s 17 comparison images are not substantial copies of Rains’ comparable images.
[43] Rains asserts that Molea’s 17 comparison works are each standalone colourable imitations of Rains’ comparable works. He submits that the fundamental factual question to be resolved is whether Molea’s infringing work comes so near to Rains’ work so as to give every person seeing the infringing work the idea created by the original: See King Features Syndicate, Inc., v. Lechter, 1950 638 (CA EXC), [1950] Ex. C.R. 297, 12 C.P.R. 60, at para. 19. To this end, Rains points to Mr. Alan Loch’s (“Loch”) testimony that multiple clients entered the Loch Gallery and mistook Molea’s work for Rains’ work. Rains also points to an email from Ms. Nicole Potvin to Molea in June 2004 wherein she indicates that, as a lay person although a gallery owner, she mistook Rains’ work for Molea’s work. These examples far from satisfy the “every person” test as articulated by the Exchequer Court.
[44] Moreover, in my view it would be unwise to establish confusion as the test for colourable imitation of an artistic work. This test by its very nature lends itself to the subjective nuances of comparison by laypeople, those who enjoy an interest in art, and those who study art history and methods.
[45] In “Colourable Imitation: The Neglected Foundation of Copyright Law” (2012) 17 Intellectual Property 1131, May M. Cheng and Michael Shortt at p. 1131 state that Norman Tamaro gives the most popular definition of colourable imitation:
In perpetuating a colourable imitation, the infringer attempts to pass off as novel a work which is only a reproduction of … another work, by making alterations to the form of the original … The term ‘colourable’ ordinarily denotes an element of deception or camouflage; a person may therefore be said to infringe a work by modifying it in such a way as to conceal such infringement.
[46] As will be discussed in more detail below, the differences in the 17 comparisons are a result of genuine independent creation and not a result of concealment or camouflage. I therefore conclude that Molea’s 17 comparison works are not colourable imitations of Rains’ comparable works.
3. Did Molea have access to the work he allegedly infringed?
[47] A plaintiff alleging infringement must establish that the defendant had access to the plaintiff’s work. This requirement has been described as the causal connection: See e.g. Atomic Energy of Canada Ltd. v. AREVA NP Canada Ltd., 2009 FC 980, 78 C.P.R. (4th) 113, at para. 35. Although I found insufficient similarities among the 17 comparison copyrighted images in Schedule A, I will nonetheless comment on access.
[48] Direct evidence of access to the copyrighted work is not required to satisfy the causal connection. The court will presume the existence of a causal connection where the defendant’s work is sufficiently similar to the copyrighted work and it is shown the defendant had the reasonable possibility of access to the copyrighted work: Atomic Energy, at para 35.
[49] Molea admits direct access to unidentified images of the Classical Series. Molea states that he first saw an image by Rains from the Classical Series at the 2001 Toronto International Art Fair, where both Molea and Rains exhibited their work. Molea allegedly created the first infringing work in 2002: See Schedule A, p. 10. Molea visited the Mira Godard Gallery booth in 2001 and saw a Rains painting of crumpled paper. By this time, Molea was painting works that both included and featured crumpled paper in realistic form and, of those works, had sold “Silent Flight” (2000) and “Happiness” (2000): See Schedule C to the Reasons for Judgment, pp. 1 and 2. Molea’s paintings exhibited at the 2001 Toronto International Art Fair were “Alice” (2001), “Floating I” (2001), and “Yellow Drape” (2001): See Schedule C, pp. 3-5.
[50] Molea further states that he may also have seen a Rains crumpled paper painting at the 2005 Toronto International Art Fair. Molea created 12 of the 17 alleged infringing images in 2005 or thereafter.
[51] Despite Molea admitting some kind of direct access, I find the evidence insufficient to establish direct access to the actual images Molea allegedly copied. I also cannot presume access to the specific images.
[52] By way of a follow-up request after an undertaking to provide side-by-side comparisons, Rains was asked for “the earliest date on which the Rains painting was exhibited and where it was exhibited such that it is reasonable to believe that Molea had the opportunity to see the Rains’ painting.” Rains advised as follows:
(i) At p. 1 of Schedule A, Rains’ “Laconia” from 1998 to Molea’s “Hero” from 2004: No evidence was provided as to where “Laconia” was exhibited or where it was otherwise available such that it would be reasonable to believe Molea had the opportunity to see it.
(ii) At p. 2 of Schedule A, Rains’ “Phasis” from 2004 to Molea’s “Butterfly” from 2004: No evidence was provided as to where “Phasis” was exhibited or where it was otherwise available such that it would be reasonable to believe that Molea had the opportunity to see it.
(iii) At p. 3 of Schedule A, Rains’ “Olympia” from 1993 to Molea’s “Dove” from 2005: No evidence was provided as to where “Olympia” was exhibited or where it was otherwise available such that it would be reasonable to believe that Molea had the opportunity to see it.
(iv) At p. 4 of Schedule A, Rains’ “Arkadia” from 1998 to Molea’s “Arcades” from 2008: No evidence was provided as to where “Arkadia” was exhibited or where it was otherwise available such that it would be reasonable to believe that Molea had the opportunity to see it.
(v) At p. 5 of Schedule A, Rains’ “Pharelon” from 2001 to Molea’s “Volare” from 2008: “Pharelon” was exhibited in December 2001 on the Meyer Gallery Sante Fe website. I accept Molea’s evidence on this issue and find as a fact that he did not visit the Meyer Gallery Sante Fe website prior to this litigation. It is logical that he did not visit the website as he was working on building his reputation in Toronto and securing representation in other more prominent places in the United States, like New York.
(vi) At p. 6 of Schedule A, Rains’ “Lesbos” from 2000 again to Molea’s “Volare” from 2008: “Lesbos” was exhibited at the Mira Godard Gallery in August 2000 and on the Meyer Gallery Sante Fe website in December 2001. My conclusion noted above with respect to the Meyer Gallery Sante Fe website applies equally here. In terms of the Mira Godard Gallery, I accept Molea’s statement that he did not see “Lesbos” at the Mira Godard Gallery or on the Mira Godard website. It is logical to me that during this time he focused on securing representation and creating new images. Mira Godard did not have a submission policy. There would be no reason for Molea to frequent a gallery without a submission policy. He would not have the time and it would not be his priority to casually attend such galleries or review the art on their websites. Moreover, it is illogical to me that Molea would have seen “Lesbos” in 2000 and waited eight years to copy it.
(vii) At p. 7 of Schedule A, Rains’ “Tyre” from 2003 to Molea’s “Building With Light” from 2007: No evidence was provided as to where “Tyre” was exhibited or where it was otherwise available such that it would be reasonable to believe that Molea had the opportunity to see it.
(viii) At p. 8 of Schedule A, Rains’ “Etna” from 2005 to Molea’s “Dove” from 2005: “Etna” was exhibited at the Nicholas Metivier Gallery in March 2005. I accept Molea’s statement that he did not see a Rains painting at the Nicholas Metivier Gallery. He admits that he attended the Nicholas Metivier Gallery in 2004 but saw no work of Rains during that visit.
(ix) At p. 9 of Schedule A, Rains’ “Sicyon” from 2003 to Molea’s “3 D Balance” from 2003: “Sicyon” was exhibited in October 2003 at the Meyer Gallery Sante Fe website. My conclusion noted above with respect to the Sante Fe Gallery website applies equally here.
(x) At p. 10 of Schedule A, Rains’ “Samothrace” from 1991 to Molea’s “White Shape on Burgundy” from 2002: “Samothrace” was exhibited by the McIntosh Gallery, University of Western Ontario. I accept Molea’s statement that he has never been to the McIntosh Gallery. He did not immigrate to Canada until December 1999 and did not create an image featuring crumpled paper as a character until 2000.
(xi) At p. of 11 of Schedule A, Rains’ “Phasis” from 2004 to Molea’s “Sail” from 2007: No evidence was provided as to where “Phasis” was exhibited or where it was otherwise available such that it would be reasonable to believe that Molea had the opportunity to see it.
(xii) At p. 12 of Schedule A, Rains’ “Thebes” from 2000 to Molea’s “Ascension” from 2005: “Thebes” was exhibited at the Mira Godard Gallery in January 2001. I accept Molea’s statement that he did not see “Thebes” at the Mira Godard Gallery or on the Mira Godard website. It is illogical to me that Molea would have seen Thebes in 2001 and waited four years to copy it.
(xiii) At p. 13 of Schedule A, Rains’ “Sunium” from 2004 to Molea’s “La Nave” from 2006: “Sunium” was exhibited at the Nicholas Metivier Gallery in January 2005. My conclusion above with respect to the Nicholas Metivier Gallery applies equally here.
(xiv) At p. 14 of Schedule A, Rains’ “Parnassus” from 1992 to Molea’s “The Last Frontier” from 2007: “Parnassus” was exhibited in February 1996 in the Art Gallery of Peterborough. I accept Molea’s statement that he did not attend the Art Gallery of Peterborough. Molea did not immigrate to Canada until December 1999 and did not create an image featuring crumpled paper until 2000.
(xv) At p. 15 of Schedule A, Rains’ “Argolidia No. 2” from 2000 to Molea’s “White Mantle” from 2004: “Argolidia No. 2” was exhibited in March 2000 at the Mira Goddard Gallery. I accept Molea’s statement that he did not see “Argolidia No. 2” at the Mira Godard Gallery or on the Mira Godard website. It is illogical to me that he would have seen it in 2000 and waited four years to copy it, particularly in light of Rains’ theory that in 2000 Molea was desperate to produce work he knew would sell in Canada.
(xvi) At p. 16 of Schedule A, Rains’ “Patrae” from 2004 to Molea’s “Fiesta” from 2007: No evidence was provided as to where “Patrae” was exhibited or where it was otherwise available such that it would be reasonable to believe that Molea had the opportunity to see it.
(xvii) At p. 17 of Schedule A, Rains’ “Icaria” from 2000 to Molea’s “Turning Point” of 2005: No evidence was provided as to where “Icaria” was exhibited or where it was otherwise available such that it would be reasonable to believe that Molea had the opportunity to see it.
[53] Rains submits that Molea’s evidence is unreliable. Rains cites examples of inconsistency between Molea’s trial testimony and his answers provided under oath at his examination for discovery. Rains invites the court to find that Molea’s evidence is not credible on the issue of access. I am not prepared to make such a finding. Upon examining the inconsistencies and context within which the evidence was given, I find none of the examples sufficient on their own or as a whole to render Molea’s evidence unreliable. In my view, the inconsistencies between his evidence at trial and his evidence at his examination for discovery are minor issues of recall; they were made in a genuine effort to be honest and truthful and not with the intent to deceive.
[54] Both at trial and at discovery, Molea was asked to recall specific steps he took to secure gallery representation in Toronto in early 2000. Rains states that the description of these steps and the inconsistencies therein are significant; they establish a reasonable inference that, during his efforts, Molea saw work from the Classical Series, including at Rains’ solo show at the Mira Godard Gallery in May 2000 and in the Canadian Art Magazine advertisement for that show in the spring of 2000. Rains theorizes that Molea decided to copy the images he saw from the Classical Series in order to redirect his art from his unsalable pre-Canada work to work with proven commercial success in Canada.
[55] However, none of Rains’ 17 comparison works appeared in the May 2000 show at the Mira Godard Gallery, nor the Canadian Art Magazine advertisement in spring of 2000. The Mira Godard Gallery exhibited “Lesbos” in August 2000, but by that time Molea had secured representation with Mr. Peterson (“Peterson”) of the Peterson Gallery. Moreover, Molea is alleged to have infringed “Lesbos” with his creation in 2008. It is illogical in my view to infer Molea had access to “Lesbos” in 2000, waited eight years, and decided to copy it. Similarly, the Mira Goddard Gallery exhibited “Argolidia No. 2” in March 2000. It is alleged that Molea copied it four years later. The Mira Godard Gallery exhibited “Thebes” in January 2001. It is alleged that Molea copied it four years later. In my view, a much tighter timeline is required to presume the existence of a causal connection in the circumstances of this case.
[56] However, because the issue framed is one of overall credibility, I will review it below.
[57] At trial, Molea stated that in or about March 2000 he attempted to secure gallery representation in Toronto by approaching galleries with a submission policy. It is agreed that the Mira Godard Gallery did not have a submission policy. He consulted the Slate Art Guide to identify galleries with a submission policy. He spoke first with Mr. Moose (“Moose”) of the Moose Gallery and thereafter with Peterson. The latter ultimately represented Molea.
[58] At trial, Molea said he could not remember the date he first met Peterson to discuss representation. He stated that he believed it was at the end of spring in 2000. At discovery, he said that he probably met with Peterson in April 2000.
[59] At trial, Molea stated that he did not have reference to Canadian Art Magazine in early 2000 when he was seeking representation. At discovery, Molea stated that he looked at Canadian Art Magazine and Slate Art Guide to research which galleries had submission policies. At trial, he said Moose showed him these magazines. At discovery, he stated that he went to a store and purchased the magazines.
[60] At trial, Molea said he did not have a chance in early 2000 to appreciate that some galleries in Yorkville have better art than others. At discovery in an answer to a question that he understood that the Yorkville galleries were a collection of art galleries in a high end part of the city he answered not really because there were difference in the galleries; some of them had better art, some of them less.
[61] At trial, Molea stated that he could not remember the first time he visited the Mira Godard Gallery but it was probably after 2002 and not in 2000. At discovery, he said he could not remember the first time he visited the Mira Godard Gallery but he definitely visited it after 2002. In answer to a question as to whether or not his first visit was in 2000, he answered maybe 2000, 2001, or 2002.
[62] In my view, this and other inconsistencies are not sufficient to warrant a finding of unreliability. Two of the cited inconsistencies are couched in an admission of recall difficulty. All of the examples relate to events insignificant and without benchmark to Molea: whether he purchased a magazine or whether it was shown to him, the timeline he determined that galleries in Yorkville were different, and the number of magazines he used to find representation. Moreover, the differences are minor in the context of a fair reading of the discovery transcript. I did not find anything in Molea’s testimony that would cause me to believe that he was intentionally trying to mislead the court. Rather, I found him honest in his attempt to recall such fine details. He was willing to admit he could not remember even points most critical to his defence.
[63] Rains submits that access should be presumed as Molea began painting images featuring crumpled paper only after he immigrated to Canada. He therefore must have seen images of the Classical Series and copied them. I disagree.
[64] Rains admits that his own paintings of still lifes, Lake Ontario, and the Olympus Series are all different from his crumpled paper works. Further, he admits that artists, even famous artists like Picasso, go through evolutions and stages in their work. Molea’s work began to evolve in the late 1990s. While he did not paint an image featuring crumpled paper until 2000, his transition from expressionism to realism and order is illustrated in two of his 1999 pre-Canada works, “Red and White” and “Danae”: See Schedule C, pp. 6 and 7. As described by Molea, “Red and White” includes several elements reminiscent of expressionism, such as the screen behind the woman with blonde hair. The background of the image is a piece of folded fabric that acts as a third character in the composition. “Danae” features a crumpled piece of aluminum foil enlarged behind the object of a resting, naked woman. Molea provided the court with a reproduction of the aluminum object used for “Danae” prior to his immigration.
[65] Molea drew and painted crumpled paper in high school and university. Kissick confirms that the University of Guelph’s introduction to drawing course uses crumpled paper to teach artists to understand light and shade. Molea taught students how to draw or paint crumpled paper as an assistant professor in Romania and per the required curriculum at Toronto’s Max the Mutt animation school.
[66] In all these circumstances, in my view, the dissimilarity of Molea’s pre-Canada work is not sufficient to presume access to the Rains’ Classical Series. Rather, the evidence establishes a logical explanation for Molea’s transition without access to the Classical Series.
[67] For reasons above, I conclude that the evidence does not sufficiently demonstrate that Molea had direct access to the 17 images he allegedly infringed. I also am not prepared to presume such access.
4. Were Rains’ 17 comparison images the source for Molea’s images or were Molea’s images created independently of Rains’ images?
[68] Where a plaintiff establishes similarity with the defendant’s work and the reasonable possibility of access, the burden then shifts to the defendant to prove the second work was created independently of the first. Independent creation of the impugned work is an absolute defence to a copyright infringement: Philip Morris Products S.A. v. Marlboro Canada Ltd., 2010 FC 1099, [2010] F.C.J. No. 1385, aff’d with respect to copyright 2012 FCA 201, [2012] F.C.J. No. 878, at paras. 116-124, leave to appeal to S.C.C. refused, [2012] S.C.C.A. No. 413, [2012] C.S.C.R. No. 413.
[69] Although I determined that Rains did not establish similarity or the reasonable possibility of access, I will nonetheless comment on independent creation.
[70] Molea states he had no reference to any of Rains’ images in creating any of his paintings, but rather created every painting referring only to the photographic model of the crumpled paper. This statement is supported by the photographic models of the Molea crumpled paper works and the substantial differences between Molea’s image and Rains’ image of the 17 comparisons. I therefore find this statement credible and I accept it.
[71] Molea describes his process as using an ordinary 8.5 x 11 inch sheet of white paper as his model because that type of paper is readily available and inexpensive. He crumples a number of paper sheets and picks one that has an interesting shape, resonates with him, and has enough volume to catch the light. Once he decides a crumpled paper is sufficiently interesting, he positions it and takes a photograph. The photograph is required because the crumpled paper tends to change shape during the weeks that it takes him to complete a painting. Molea then uses a computer to make changes to the photographic image, such as cropping and creating a different base (the “Molea process”).
[72] Molea provided the court with a copy of his photographic model for every piece of artwork claimed to infringe Rains’ paintings, including those for each of the 17 comparisons. It is illogical to me that Molea would refer to Rains’ painting rather than paint the photographic model of his creation as it appears in front of him.
[73] Rains submits that it is irrelevant that Molea used a different photographic model because the result is a colourable imitation. As set out above, I determined the result is not a colourable imitation. Further, for reasons set out below, I conclude that the differences in the 17 comparisons are substantial and the result of genuine independent creation rather than concealment or camouflage.
[74] Molea specifically describes his creation method for some of his images in the 17 comparisons. He identifies differences between his work and Rains’ comparable work:
(i) At p. 1 of Schedule A, Rains’ “Laconia” from 1998 to Molea’s “Hero” from 2004: He followed the Molea process to create “Hero” and cropped the photographic model slightly to accentuate the differences between light and shadow. “Hero” is a small painting at 18 x 24 inches. “Laconia” is a large painting at 44 x 66 inches. Molea named the painting “Hero” because the crumpled paper looks like a monumental sculpture dedicated to a hero.
(ii) At p. 2 of Schedule A, Rains’ “Phasis” from 2004 to Molea’s “Butterfly” from 2004: He followed the Molea process to create “Butterfly” and accentuated the contrast between light and shadow to give depth to the volume. Molea states that his material for “Butterfly” created tension and numerous wrinkles which provided the object with character. Rains’ shape is simple with more volume and surface because he used thicker material and a different crumpling method. Molea used direct sunlight during evening hours to create shadows. Rains used a softer more indirect light to provide minimal contrast between light and shadow. Rains used a more contemporary style of chiaroscuro in the sense that it is a white shape against a dark background, resulting in a flattened image. Molea’s use of chiaroscuro is closer to the Renaissance style where objects are painted to appear in the limelight with darker portions melting into the background to create a sense of distance, mystery, and drama.
(iii) At p. 3 of Schedule A, Rains’ “Olympia” from 1993 to Molea’s “Dove” from 2005: He followed the Molea process to create “Dove” and cropped the image to render it horizontal. He then enhanced the model’s volume to create a more dramatic effect of light and shadow. Molea focused on the realistic rendering of the light and shadow that define this work’s character. He states that he does not understand why these paintings are being compared.
(iv) At p. 5 of Schedule A, Rains’ “Pharelon” from 2001 to Molea’s “Volare” from 2008 and at p. 6 of Schedule A, Rains’ “Lesbos” from 2000 again to Molea’s “Volare” from 2008: He followed the Molea process to create “Volare.” He rotated the paper to a different position because the shape showed a winged flying character and he wanted to paint that character. Molea painted the paper as if it were flying. As the painting evoked the expression of flight, he named it “Volare” after the Italian word for flight.
(v) At p. 7 of Schedule A, Rains’ “Tyre” from 2003 to Molea’s “Building With Light” from 2007: He followed the Molea process to create “Building With Light” but this time he crumpled a yellow post-it note. He liked the shape without even intending to create the model.
[75] The differences are apparent generally throughout the 17 comparisons. As Molea states, he enlarges the objects in his paintings so that they occupy most of the canvas space. Rains’ paintings, such as “Pharelon”, place a greater emphasis on the void around the composition. Molea states and Wilkin admits that Molea uses material and shapes with greater crumple. Wilkin also admits to many differences in the 17 comparisons as presented to her, including differences in reflectivity, configuration, and shadow. Kissick states that Molea and Rains’ works are generally both similar and different. They are similar in that both artists share an interest in iconic compositions, use oil paint on canvas, create easel-sized paintings, and use lighting techniques that suggest volume. However, Kissick states that Molea’s works are more animated. His paintings are derived from a photographic image and look like paintings of photographs rather than still lifes. Kissick states that Molea is a photorealist with minimal reference to his hand in his work, whereas the same minimization is not apparent in Rains’ work.
[76] Molea has established that he created his 17 comparison images independently from Rains’ comparison images; this is evident considering the visual differences, the photographic models, and Molea’s statement that he did not refer to Rains’ images during the creation process.
5. Does the applicable limitation period bar Rains’ claim?
[77] Although I have found against Rains, I will nonetheless comment on the applicable limitation period.
[78] The parties agree that the applicable limitation period is three years from the time that the plaintiff knew or could reasonably have been expected to know of the infringement: Copyright Modernization Act, S.C. 2012, c. 20, ss. 49, 62, amending the Act, s. 43. Further, they agree that each new infringement constitutes a fresh cause of action. A limitation analysis is required vis-à-vis each alleged infringement: John S. McKeown, Fox on Canadian Law of Copyright and Industrial Designs, 4th ed. (Toronto: Carswell, 2003), at p. 24-9.
[79] On May 6, 2009, Molea and Rains entered into a Tolling Agreement in respect of this matter. I find therefore that any alleged work of infringement postdating May 6, 2006 is not subject to the limitation defence. Specifically, the applicable limitation period does not bar Rains’ claim concerning the following images:
(i) At p. 4 of Schedule A: “Arcades” (2008)
(ii) At pp. 5 and 6 of Schedule A: “Volare” (2008)
(iii) At p. 7 of Schedule A: “Building With Light” (2007)
(iv) At p. 11 of Schedule A: “Sail” (2007)
(v) At p. 14 of Schedule A: “The Last Frontier” (2007)
(vi) At p. 16 of Schedule A: “Fiesta” (2007).
[80] With respect to the remaining 11 images, I accept Rains’ evidence, as more particularly described below, that Rains did not know of Molea’s crumpled paper work until June 2007. Further, I conclude that he could not have reasonably been expected to know of Molea’s work until June 2007.
[81] Rains states that he was first aware of Molea’s work in June 2007 when he saw a Molea painting at a framing shop, the Gilder. He was curious and made a mental note to go to the Loch Gallery to see further Molea works. When he later attended the Loch Gallery, there were no hung Molea paintings. He conducted further research into Molea’s works and spoke to Mr. Nicholas Metivier (“Metivier”) about his concerns of infringement in or about 2008. This is consistent with Metivier’s recollection. Prior to June 2007, Rains had no knowledge of Molea’s crumpled paper works.
[82] Molea submits that Rains ought to have known prior to June 2007 that Molea was painting crumpled paper in still life form. Molea had a spring 2002 solo show at the Peterson Gallery, two doors down from the Mira Godard Gallery representing Rains at the time. The Peterson Gallery was on a main pedestrian walkway with a good-sized front window. A person walking by the gallery could see paintings hung in the window. Molea’s crumpled paper works hung in that window in 2002 and were visible from the street. Rains states that he occasionally attended the Mira Godard Gallery in 2002. Molea concludes that Rains could have reasonably been expected to see Molea’s paintings while they were visible in the window two doors away.
[83] I disagree. I accept Rains’ statement that during this time period he did not frequent the other Yorkville galleries. Rather, when he was not ill, he was busy painting in his studio. Rains states that during this time he did not frequent the Mira Godard Gallery more than once a month. In my view, it is more likely that, if the paintings were visible from the street, Rains attended the Mira Godard Gallery at intervals when Molea was not exhibiting works on the Peterson Gallery’s main floor. It defies logic to accept that Rains saw a Molea crumpled paper image and failed to take action similar to actions that he took in 2007. Rains passionately believes that Molea misappropriated the gestalt of the Classical Series. If he saw a Molea crumpled paper image in 2002, I am confident he would have immediately investigated further.
[84] Similarly, I do not accept that Rains ought to have known of Molea’s alleged infringing works as a result of Molea’s showings at the 2001 and 2005 Toronto International Art Fair. Rains has no recollection of attending the 2001 or 2005 Art Fair. Even if he did attend, none of the 17 alleged infringing images were exhibited in 2001. The documentary evidence reflects that “Dove” was exhibited in 2005: See Schedule A, pp. 3 and 8. Nonetheless, if he did attend, I do not accept that Rains saw “Dove” and chose not to act as he acted in 2007.
[85] Further, I do not accept that Rains ought to have known of Molea’s alleged infringing works as a result of a small introductory Molea exhibition at the Loch Gallery in 2005. By 2004, Metivier and Rains left the Mira Godard Gallery and Yorkville because Metivier decided to establish his own Gallery. Both gentlemen state that they did not return to the Yorkville gallery scene after they left the Mira Godard Gallery in 2004. I find this evidence credible and I accept it.
[86] Finally, I do not accept that Rains ought to have known of Molea’s works because of their presence on the internet. Rains denies seeing Molea’s images on the internet prior to his investigation upon viewing Molea’s work at the Gilder in 2007. For reasons noted above, I find this evidence grounded in logic and I accept it. I do not think that Rains was being blind to Molea’s work. Rains simply had no reason to be vigilant and research potential infringement until after June 2007.
[87] For reasons noted above, I conclude that Rains’ claim is not barred. He could not have reasonably been expected to know of the alleged infringement until June 2007.
6. If infringement is found, what is the appropriate remedy?
[88] Although I have determined there is no infringement, I will nonetheless comment on the remedy appropriate in the circumstances had infringement been found.
[89] Sections 34 and 35 of the Act provide a statutory framework for remedies where copyright infringement is found:
34.(1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.
35.(1) Where a person infringes copyright, the person is liable to pay such damages to the owner of the copyright as the owner has suffered due to the infringement and, in addition to those damages, such part of the profits that the infringer has made from the infringement and that were not taken into account in calculating the damages as the court considers just.
Proof of profits
(2) In proving profits,
(a) the plaintiff shall be required to prove only receipts or revenues derived from the infringement; and
(b) the defendant shall be required to prove every element of cost that the defendant claims.
[90] Rains seeks the following remedies:
(i) A declaration that copyright subsists in the works of the Classical Series and that Molea infringed Rains’ copyright
(ii) Nominal damages and profits
(iii) A permanent injunction
(iv) The delivery up of infringing works still in Molea’s possession.
(i) Declaratory relief
[91] In my view, declaratory relief is appropriate if copyright subsists and infringement is established. Copyright vests rights exclusively in its owner. A misappropriation of those rights warrants a binding declaration of the rights determined to be properly vested: See the Act, s. 34(1); Courts of Justice Act, R.S.O. 1990, C.C. 43, s. 97; and Operation Dismantle Inc. v. Canada, 1985 74 (SCC), [1985] 1 S.C.R. 441, at paras. 31-33.
(ii) Nominal damages and profits
[92] Rains seeks nominal damages for Molea’s infringing works. Rains led no evidence on damages. There is no evidence that Rains suffered any negative financial consequences, mental anguish, or distress as a result of Molea’s work. While mathematical precision is not required to award damages, in this case there is simply no evidence from which to assess nominal damages and no basis to grant nominal damages as a remedy.
[93] If infringement was found in each of the 17 comparisons, there would be a basis to grant Rains recovery of Molea’s profits earned from his infringement. Section 35(2)(b) of the Act requires that a defendant who is found to infringe must prove every element of cost associated with revenues received from the infringing activities. Profits should be calculated using the differential method: the “calculation of the revenues derived from infringement less those variable and fixed costs which contributed to the sums received as revenues”: Wellcome Foundation Ltd. v. Apotex Inc. (1998), 1998 8270 (FC), 82 C.P.R. (3d) 466, at para. 42 (F.C.T.D.), aff’d 2001 22028 (FCA), [2001] 2 F.C. 618 (F.C.A.), leave to appeal to S.C.C. refused, [2001] S.C.C.A. No. 192.
[94] Molea’s evidence concerning his variable and fixed costs is problematic. He states first that the cost of each painting ranged from $1,000 to $1,500. Under cross-examination, however, Molea agreed that direct costs were typically not more than $600 to $700 per painting. Rains submits that as a rough justice it would be appropriate to use $750 as the average cost to produce a Molea crumpled paper work. I agree.
[95] Of the 17 comparisons, two Molea works each allegedly infringe two different Rains images: See Schedule A, pp. 3 and 8, pp. 5 and 6. In my view, each alleged infringing image should be counted only once. Further, one image has not been sold so there are no profits to date: See Schedule A, p. 7. To account for the remaining images, the average direct cost must be subtracted from Molea’s received revenues for each image:
(i) At p. 1 of Schedule A, Molea’s “Hero” from 2004: $3,070.83 - $750 = $2,320.83
(ii) At p. 2 of Schedule A, Molea’s “Butterfly” from 2004: $3,070.83 - $750 = $2,320.83
(iii) At p. 3 of Schedule A, Molea’s “Dove” from 2005: $6,000 - $750 = $5,250
(iv) At p. 4 of Schedule A, Molea’s “Arcades” from 2008: $7,920 - $750 = $7,170
(v) At p. 5 of Schedule A, Molea’s “Volare” from 2008: $9,093.10 - $750 = $8,343.10
(vi) At p. 9 of Schedule A, Molea’s “3 D Balance” from 2003: $3,500 - $750 = $2,750
(vii) At p. 10 of Schedule A, Molea’s “White Shape on Burgundy” from 2002: $2,310 - $750 = $1,560
(viii) At p. of 11 of Schedule A, Molea’s “Sail” from 2007: $8,415 - $750 = $7,665
(ix) At p. 12 of Schedule A, Molea’s “Ascension” from 2005: $6,000 - $750 = $5,250
(x) At p. 13 of Schedule A, Molea’s “La Nave” from 2006: $8,000 - $750 = $7,250
(xi) At p. 14 of Schedule A, Molea’s “The Last Frontier” from 2007: $5,355 - $750 = $4,605
(xii) At p. 15 of Schedule A, Molea’s “White Mantle” from 2004: $4,200 - $750 = $3,450
(xiii) At p. 16 of Schedule A, Molea’s “Fiesta” from 2007: $7,050 - $750 = $6,300
(xiv) At p. 17 of Schedule A, Molea’s “Turning Point” from 2005: $6,000 - $750 = $5,250
[96] Therefore, if infringement were established, the accounting of profits properly awarded to Rains would be $69,484.76.
(iii) Permanent injunction
[97] A plaintiff that successfully establishes copyright is prima facie entitled to a permanent injunction. The defendant bears the onus to rebut the presumption in favour of granting a permanent injunction: The Queen v. James Lorimer and Co., 1984 5329 (FCA), [1984] 1 F.C. 1065, 1983 CarswellNat 72, at para 10 (F.C.A.). Molea provided no evidence to rebut the presumption. If infringement were found, I would order Molea permanently enjoined from infringing Rains’ images of the 17 comparisons. I would limit the order for a permanent injunction to the 17 existing works. I would not restrain Molea on future infringements; such a restraint would be tantamount to granting copyright protection to a fixed work prior to its creation.
(iv) Delivery up
[98] A plaintiff that successfully establishes copyright infringement is presumptively entitled to have the defendant deliver up all infringing works in the defendant’s possession. It is for the defendant to rebut the presumption: L.S. Entertainment Group Inc. v. Formosa Video (Canada) Ltd., 2005 FC 1347, [2005] F.C.J. No. 1643, at paras. 69-70. If infringement were found, I would order delivery up of the only remaining unsold image of the 17 comparisons, “Building With Light” (2005). Molea submits that Rains’ conduct disentitles him to delivery up for destruction of Molea’s painting. I disagree. I find no evidence from Molea sufficient to rebut the presumption in favour of granting an order to deliver up “Building With Light.”
Conclusion
[99] This case involves two artists who had the same (and not unique) idea to paint crumpled paper in a realistic way using conventional painting techniques. Their motivations are different. Their processes are different. Their resultant expressions are different. The Act protects each original Rains painting and each original Molea painting from infringement. If any of Molea’s 17 comparison works were substantial copies or colourable imitations of Rains’ comparable images, Rains would be successful in his claim of copyright infringement. However, simply because Rains expressed his idea before Molea and found commercial success and critical acclaim for doing so, does not mean that Molea or any other painter is forever prohibited from independently creating an expression of crumpled paper in still life form. In my view, to give Rains exclusive access to this territory would unfairly silence independent expressions of the idea and render absurd the very purpose of the Act.
Disposition
[100] For reasons set out above, the claim is dismissed.
Costs
[101] Rains and Molea are encouraged to agree on an appropriate cost award for this matter. If they are unable to agree, written submission are invited. Molea is to submit no more than 5 pages of submissions within 20 days of the date of these Reasons for Judgment. Rains is to submit no more than 5 pages of written submissions within 20 days thereafter. Molea is to submit a reply of no more than 2 pages, if any, within 10 days thereafter. If no reply is forthcoming, Molea is to so advise.
CHIAPPETTA J.
Released: August 15, 2013