Court File and Parties

Court File: CV-17-573619

MOTION HEARD: 20190227

REASONS RELEASED: 20190718

SUPERIOR COURT OF JUSTICE – ONTARIO

BETWEEN:

KEVIN SULLIVAN and SULLIVAN ENTERTAINMENT INC.

Plaintiffs

and

NORTHWOOD MEDIA INC. c.o.b. as NORTHWOOD ENTERTAINMENT, NORTHWOOD (ANNE) INC., MONUMENTAL PICTURES LIMITED and MOIRA WALLEY-BECKETT

Defendants

BEFORE: MASTER D. E. SHORT

COUNSEL: Jann Lilles F (416) 865-9010 -for moving plaintiffs jlilles@litigate.com

Brittiny Rabinovitch F (416) 863-2653 -for responding defendants Brittiny.rabinovitch@blakes.com

RELEASED: July 18, 2019

Reasons re Court Established Discovery Plan

Anne of Green Gables, never change,

We like you just this way.

Anne of Green Gables, sweet and strange,

stay as you are today.

Though blossoms fade and friends must part,

Old grow the songs we’ve sung.

Anne of Green Gables, in our hearts,

You are forever young.

Anne Of Green Gables: The Musical

I. Overview

[1] This motion relates to the possible imposition of elements of a Discovery Plan in an action where the plaintiffs alleges the defendants have breached the plaintiff’s copyright with respect to a number of filmed episodes surrounding the Canadian icon, Anne of Green Gables.

[2] Originally this fictional character was created over a century ago by Lucy Maud Montgomery in 1908.

[3] The plaintiff asserts that numerous elements contained in their bringing the original story and newly created stories involving both the characters in the original books and those subsequently created by or on behalf of the plaintiffs (the “Sullivan Works), have been appropriated by the defendants for a new television/Netflix version entitled “ANNE” or now “ANNE with an E”

[4] The nature of the dispute is typified in these extracts (from a paragraph in the Statement of Claim) regarding the Defendants’ production:

“The Premiere of "Anne" contains infringements of the original distinctive aspects of the Sullivan Works, including:

(a) copying the decision to set the story in the late 1890's as in Anne 1 and Anne 4, instead of being set in the 1870' s as in the Anne of Green Gables novel;

(b) copying the use of steam trains from a scene in Anne 3, not available in the 1870's;

(c) copying the set and depiction of Charlottetown from Anne 4;

(d) copying the opening sequence of scenes from Anne 1 during which Anne's life of hardship and emotional abuse at the hands of the Hammond family is depicted before being sent to the Hopeton Orphanage and ultimately to Green Gables, including copying the staging and story sequence wherein Matthew passes by Mrs. Lynde's house on his way to the train station to pick up Anne;

(xvii) Anne offering up to Marilla that she is good at washing dishes from Anne 4.”

[5] Counsel have been endeavouring to proceed to discoveries in this action where conceivable damages, in the millions of dollars, are potentially at stake.

[6] While they have made admirable progress towards agreeing upon a Discovery Plan they have reached a stalemate with regard to mutually acceptable components of a jointly acceptable plan.

[7] The parties booked one hour for this motion. The somewhat novel issues applicable in this case, including the impact of a recent rule amendment, resulted, regrettably, in a much longer reservation of this decision than normally would be the case.

[8] I note that it was clear to me that the parties had reached a number of compromises on elements of the proposed plans, prior to the argument of this motion. It is my intent that those agreements are to continue and that the purpose of this decision is to provide direction with regard to the unresolved items as at the date the motion was argued.

II. The New Rules

[9] During the first year following my appointment as a Case Management Master, the Province of Ontario enacted what were colloquially known as the “Osborne Amendments”, which took effect on January 1, 2010.

[10] Those rules made it mandatory that the Court abide by the key principle of “proportionality” in making decisions under the new Rules.

[11] In particular, those rules incorporated the new Rule 29.1, which for the first time introduced the concept of a “discovery plan” for civil litigation in the province.

[12] That rule provided that where a party to an action intends to obtain evidence by way of an examination for discovery, the parties to the action “shall agree” to a discovery plan in accordance with the rule.

[13] Originally, the rule mandated that the discovery plan was to be “agreed to before the earlier of,

(a) 60 days after the close of pleadings or such longer period as the parties may agree to; and

(b) attempting to obtain the evidence.”

[14] Rule 29.1.03 (3) directs that the discovery plan shall be in writing, and shall include, inter alia,

(a) the intended scope of documentary discovery under rule 30.02 taking into account relevance, costs and the importance and complexity the issues in the particular action.

[15] Rule 30.02 deals with disclosure. That rule provides that:

Every document relevant to any matter in issue in an action that is or has been in the possession, control or power up a party to the action shall be disclosed as provided in rules 30.03 to 30.10, whether or not privilege is claimed in respect to the document.

[16] Rule 30.04 (8) deals with “Divided Disclosure or Production” and provides:

(8) Where a document may become relevant only after the determination of an issue in the action and disclosure or production for inspection of the document before the issue is determined would seriously prejudice a party, the court on the party’s motion may grant leave to withhold disclosure or production until after the issue has been determined.

[17] The unintended consequence of this new element resulted in delays in getting relatively straightforward cases to the discovery stage, where, prior to the amendments to the Rules to require a Plan, any missing materials could be sought during an examination for discovery and perhaps resolved on a refusals motion.

III. Prologue

[18] When they rule was enacted in 2010 there was no provision permitting the court to impose a discovery plan where the parties could not agree. In TELUS Communications Company v. Sharp et al.; 2010 ONSC 2878, 102 O.R. (3d) 93; 2010 ONSC 2878, I held that while the rule did not provide specific guidance within spec respect to imposing the plan in the situation it does deal with some of the consequences of a failure to agree.

[19] As a consequence of those provisions, I concluded at paragraph 16 of my decision that the Rules were to be “liberally construed to secure the just, most expeditious and least expensive determination of every civil proceeding on its merits”. I therefore implemented what I thought was the appropriate result in terms of rule 1.04 (2) which provides for matters that were not provided for in these rules, the practice shall be determined by analogy to them.

[20] I therefore concluded:

[17] Based on the foregoing provisions, I have no doubt that I have the authority to impose a discovery plan upon a party that is not willing to “agree” to a Plan.

[21] Subsequent to the commencement of the present action was commenced, the Rules of Civil Procedure were amended effective as of 2019, to conform to (and, in effect, ratify) my 2010 ruling. The amendments to the rule are of significance and are as follows:

[22] A particular component of the rule amendment establishes that, if the court creates a discovery plan for the parties, there is an exemption to many of the elements that would otherwise be applicable under the Rule.

[23] In that regard the new amendment reads:

NON-APPLICATION OF RULE

29.1.01 This Rule does not apply to parties who are subject to a discovery plan established by the court.

[24] If the court does not impose a plan, the continuing rule specifically sets out the following:

(3) The discovery plan shall be in writing, and shall include,

(a) the intended scope of documentary discovery under rule 30.02, taking into account relevance, costs and the importance and complexity of the issues in the particular action;

(b) dates for the service of each party’s affidavit of documents (Form 30A or 30B) under rule 30.03;

(c) information respecting the timing, costs and manner of the production of documents by the parties and any other persons;

(d) the names of persons intended to be produced for oral examination for discovery under Rule 31 and information respecting the timing and length of the examinations; and

(e) any other information intended to result in the expeditious and cost-effective completion of the discovery process in a manner that is proportionate to the importance and complexity of the action. (my emphasis)

[25] The rule continues to deal with the consequences of a failure to agree to plan:

29.1.05 (1) On any motion under Rules 30 to 35 relating to discovery, the court may refuse to grant any relief or to award any costs if the parties have failed to agree to or update a discovery plan in accordance with this Rule.

[26] However now this alternative has been created:

Court may Impose Discovery Plan

(2) If the parties fail to agree to a discovery plan in accordance with this Rule, the court may order that examinations for discovery be conducted in accordance with a discovery plan established by the court, which may set a schedule for examinations and impose such limits on the right of discovery as are just. O. Reg. 537/18, s. 6.

[27] Thus, the Court now has a very broad discretion, if the parties are unable to agree upon a Plan.

IV. Establishing a Plan

[28] Here, I am satisfied that the parties endeavored to reach a mutually acceptable discovery plan but could not agree on some major elements.

[29] In the course of the hearing of this motion I received arguments supported by facta filed by both sides. I made a number of rulings “on the fly” on a number of areas but reserved my decision regarding the proper approach to a number of specific elements sought by the parties.

[30] It has proved a difficult exercise to reach a determination of what I felt was a reasonable compromise on a Discovery Plan, that would enable the parties to move forward with this action.

[31] One of the problems that will still remain is the application of the newly amended rule to the discovery process going forward.

[32] For example, if either party was dissatisfied with my ruling at this point in time, are they obliged to bring an appeal now to avoid any argument based upon their taking of a fresh step without challenging the ruling.

[33] In my view the more appropriate approach to such determinations is that they ought to be treated as interlocutory by the parties, pending further order from either another master or a higher judicial official when a more complete record is available after a first round of discoveries.

[34] Against that background, I turn to a historical overview and legal concepts to be considered with regard to the disputed areas of production, contested before me.

V. Green Gables

[35] This case arises out of a relatively unusual and unique situation.

[36] The Wikipedia online entry relating to Anne of Green Gables, found at, https://en.wikipedia.org/wiki/Anne_of_Green_Gables , reads in part:

Anne of Green Gables is a 1908 novel by Canadian author Lucy Maud Montgomery (published as L. M. Montgomery). Written for all ages, it has been considered a classic children's novel since the mid-twentieth century. Set in the late 19th century, the novel recounts the adventures of Anne Shirley, an 11-year-old orphan girl, who is mistakenly sent to two middle-aged siblings; Matthew and Marilla Cuthbert, originally intending to adopt a boy to help them on their farm in the fictional town of Avonlea on Prince Edward Island. The novel recounts how Anne makes her way through life with the Cuthberts, in school, and within the town.

Since its publication, Anne of Green Gables has sold more than 50 million copies and has been translated into at least 36 languages. Montgomery wrote numerous sequels, and since her death, another sequel has been published, as well as an authorized prequel. The original book is taught to students around the world.

The book has been adapted as films, made-for-television movies, and animated and live-action television series. Musicals and plays have also been created, with productions annually in Canada since 1964 of the first musical production, which has toured in Canada, the United States, Europe, and Japan.

[37] Having regard to that history, is it nevertheless possible for a different interpretation to be made with respect to that story based upon the work of Ms. Montgomery, which is no longer subject to copyright protection by virtue of the lapse of time from the original publication. The Anne brand is however still subject to protection with respect to various trademarks.

[38] The present action based upon an assertion that many of the elements of the new Netflix version of the story entitled Anne with an “E”, is based upon or simply incorporates elements that were created not by the original author but instead created by the plaintiffs a number of years ago by way of newly created elements incorporated into their television episodes.

[39] These issues now come to be addressed in the somewhat esoteric area of the law focused upon the determination of what is the applicable permissible range for the use of concepts and images developed for the earlier production in the subsequent, more recently produced version, relating to the world of Green Gables.

VI. Copyright Litigation

[40] Justice Archibald and Master Sugunasiri, in their 2019 edition of Ontario Superior Court Practice, (with footnotes omitted) observe:

The Copyright Act strikes a 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. It seeks to ensure that an author will reap the benefits of his efforts, in order to incentivize the creation of new works. However, it does not give the author a monopoly over ideas or elements from the public domain, which all are free to draw upon for their own works. For example; the general stock of incidents in fiction or drama is free for all to use - a substantial part of ·everyone's· culture, not of any one individual's work. The Act protects original literary, dramatic, musical, and artistic works (s. 5): It protects the expression of ideas in these works, rather than ideas in and of themselves. An original work is the expression of an idea through an exercise of skill and judgment. However; the Act does not protect every "particle" of an original work, any little piece the taking of which cannot affect the value of the work as a whole.

Section 3 of the Copyright Act provides that the copyright owner has the sole right to reproduce “the work or any substantial part thereof ”. A substantial part of a work is a flexible notion. It is a matter of fact and degree . Whether a part is substantial must be decided by its quality rather than its quantity. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents· a. substantial portion of the· author's skill and judgment expressed therein. A substantial part of a work is not limited to the words on 'the page or the brushstrokes on the canvas. The Act protects authors against both literal and non-literal copying, so long as the copied material forms a substantial part of the infringed work. ·

[41] Thus, an element in the resolution of this litigation will involve the determination of what is the extent of “substantial” similarities within the overall content of the two series. In this regard the commentary of my colleagues on this Court continues:

Canadian courts have generally adopted a qualitative and holistic approach to assessing substantiality. The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with P's right, As a general matter, it is important to not conduct the substantiality analysis by dealing with the copied features piecemeal. Rather, the cumulative effect of the features copied from the work must be considered, to determine whether those features amount to a substantial part of the author's skill and judgment expressed in his or her work, as a whole.

[42] Their analysis continues with this helpful observation:

However, on a breach of copyright action, it may not be an error to take a three-step approach requiring the court to: (1) determine what elements of the earlier work were original, within the meaning of the Copyright Act; (2) exclude non-protectable features of the later work (such as ideas, elements drawn from the public domain and generic elements commonplace in the medium); and (3) compare what remains of the earlier work after this "weeding-out" process to the later work, and determine whether a substantial part of the earlier work was reproduced. This three-step approach is similar to the “abstraction-filtration-comparison” approach used to assess substantiality in the context of computer software infringement in the United States. While such an approach might be useful in deciding whether a substantial part of some works, for example computer programs, has been copied, many types of works do not lend themselves to a reductive analysis.

[43] Thus, it would seem that the question of whether there has been substantial copying focuses on whether the copied features constitute a substantial part of Plaintiff’s work and not whether they amount to a substantial part of Defendant’s work.

[44] The alteration of copied features or their integration into a·work, that is notably different from Plaintiff’s work does not necessarily preclude a claim that a substantial part of a work has been copied. As the Copyright.Act states, infringement includes “any colourable imitation” of a work.

[45] These commentary extracts conclude with a discussion of the decision in Cinar Corp. v. Robinson, (infra):

“Differences are not irrelevant to the substantiality analysis. If the differences are so great that the work, viewed as a whole, is not an imitation but rather a new and original work, then there is no infringement.”

I therefore turn to that decision.

VII. Robinson Crusoe

[46] Relatively recently, the Supreme Court of Canada had an opportunity to consider a somewhat similar situation to the present case. I therefor turn to the approach of Chief Justice Beverley McLachlin in Cinar Corporation v. Robinson, 2013 SCC 73, [2013] 3 S.C.R. 1168; 2013 SCC 73; [2013] 3 R.C.S. 1168; [2013] S.C.J. No. 73.

[47] The headnote for that case sets out the following:

R spent years developing an educational children's television show, "The Adventures of Robinson Curiosity" ("Curiosity"). R drew his inspiration from Daniel Defoe's novel Robinson Crusoe, as well as from his own life experiences. He developed characters, drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials for his Curiosity project.

From 1985 to 1987, R and his company, Les Productions Nilem inc. ("Nilem"), undertook various initiatives to get the Curiosity project developed. In so doing, R gave a copy of his Curiosity work to W and C, who were directors and officers of Cinar Corporation ("Cinar"). During this same period, a presentation on Curiosity was given to I, a French creator of children's television shows. Despite the various efforts undertaken by R and his partners, the project failed to attract investors and stalled.

R shelved his project, but did not forget about it. On September 8, 1995, R watched on television the first episode of a new children's television show, "Robinson Sucroe" ("Sucroe"). He was stunned to see that Sucroe, as he perceived it, was a blatant copy of Curiosity. R subsequently discovered that several parties who had been given access to his Curiosity project, namely Cinar, W, C and I, were also involved in the production of Sucroe.

[48] The Court’s analysis on the determination of an infringement reads in part:

(1) The Scope of the Protection Afforded by the Copyright Act

23 The Copyright Act strikes "a 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": [cited cases omitted] It seeks to ensure that an author will reap the benefits of his efforts, in order to incentivize the creation of new works. However, it does not give the author a monopoly over ideas or elements from the public domain, which all are free to draw upon for their own works. For example, “[t]he general stock of incidents in fiction or drama is free for all to use -- a substantial part of everyone's culture, not of any one individual's work”: D. Vaver, Intellectual Property Law: Copyright, Patents, Trade-marks (2nd ed. 2011), at p. 182.

24 The Act protects original literary, dramatic, musical, and artistic works: s. 5. It protects the expression of ideas in these works, rather than ideas in and of themselves: CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339, at para. 8. An original work is the expression of an idea through an exercise of skill and judgment: CCH, at para. 16. Infringement consists of the unauthorized taking of that originality.

25 However, the Act does not protect every "particle" of an original work, "any little piece the taking of which cannot affect the value of [the] work as a whole": Vaver, at p. 182. Section 3 of the Copyright Act provides that the copyright owner has the sole right to reproduce "the work or any substantial part thereof". [emphasis in original]

26 A substantial part of a work is a flexible notion. It is a matter of fact and degree. "Whether a part is substantial must be decided by its quality rather than its quantity": Ladbroke (Football), Ltd. v. William Hill (Football), Ltd., [1964] 1 All E.R. 465 (H.L.), at p. 481, per Lord Pearce. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author's skill and judgment expressed therein.

27 A substantial part of a work is not limited to the words on the page or the brushstrokes on the canvas. The Act protects authors against both literal and non-literal copying, so long as the copied material forms a substantial part of the infringed work. As the House of Lords put it, the "part" which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part.... [T]he original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original.

(Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2001] 1 All E.R. 700, at p. 706, per Lord Hoffmann; see also Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2d Cir. 1930), per Learned Hand J.)

28 The need to strike an appropriate balance between giving protection to the skill and judgment exercised by authors in the expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on the other, forms the background against which the arguments of the parties must be considered.

[49] Against this admittedly, overly long, introduction to the issues before me relating to this action, I now turn to examples of the specific components of the competing discovery plans put forward by the two sides.

VIII. Scope of Documentary Discovery

[50] At the outset of an examination of what ought to be produced at this stage, I commend the parties for their approach to a behemoth such as this case. The portion of the discovery plan which has been agreed upon, confirms these overriding rights of all parties:

It is agreed that nothing in this discovery plan prejudices any party's ability to request a document or documents not specifically described in this section so long as they are relevant to a matter in issue in the action (subject to any valid claims of privilege) and are or have been in the party’s possession, control or power as set out in Rule 30.02(1) of the Rules of Civil Procedure.

[51] The Statement of Claim provides a voluminous catalogue of various television programs created by plaintiffs for an extended period of well over two decades.

[52] In particular, paragraphs 5 and 11 of the Claim contain an enumeration of the various previous productions. Paragraph 5 of the Claim (with most copyright registration details omitted) reads in part:

5. In particular, between the early l980's and the mid-2000's, Kevin Sullivan wrote, directed, or produced and otherwise developed a series of works based around the Anne of Green Gables series of novels written by Lucy Maud Montgomery and originally published beginning in 1908, including:

(a) Anne of Green Gables (1985) ("Anne 1 "), the copyright in which is registered under Canadian Copyright Registration No. 358612;

(b) Anne of Green Gables, The Sequel (1987) ("Anne 2"), …

(c) Anne of Green Gables: The Continuing Story (2000) ("Anne 3"),

(d) Anne of Green Gables: A New Beginning (2008) ("Anne 4"), (e) Anne: Journey to Green Gables (2005), …; and

(f) Anne of Green Gables: The Animated Series (2001-2002), comprised of twenty-six individual episodes aired over two broadcasting seasons; (collectively the "Anne Works").

[53] The Anne Works are said to comprise over 16 commercial hours of film and 15 commercial hours of animation.

[54] Paragraph 11 of the Claim deals with later productions (the names of a number of which I have omitted):

11. Between the late 1980's and mid-1990's, Kevin Sullivan wrote, directed, produced and otherwise developed a series of works based around a fictional town referred to in the Anne of Green Gables series of novels, namely Avonlea, including:

(a) Road to Avonlea (1990-1996), comprised of 91 individual episodes aired over 7 broadcasting seasons, the copyright to which is, in part, registered under Canadian Copyright Registration Nos. 405399 (ROAD TO AVONLEA: MISFITS AND MIRACLES), …., 405389 (ROAD TO AVONLEA: AUNT HETTY'S ORDEAL), 405388 (ROAD TO AVONLEA: HOW KISSING WAS DISCOVERED), 405387 (ROAD TO AVONLEA: SARA'S HOMECOMING); and

(b) An Avonlea Christmas ( 1998);

( collectively, the "Avonlea Works").

[55] In response, Paragraph 11 of the Statement of Defence succinctly asserts:

11. The defendants deny that the plaintlffs own any copyright as alleged in the Amended Statement of Claim and put them to the strict proof thereof.

[56] Relying upon that paragraph the Defendant’s proposal for documents to be produced by the plaintiffs includes (with my emphasis added) the following three opening requests:

“Intended Scope of Documents to be Produced by Plaintiffs:

Every document in the possession, power or control of the plaintiffs relevant to a matter in issue in respect of the action, including:

• All documents including emails, letters, text messages, contracts, memoranda and notes relevant to the specific allegations in the pleadings, and in particular relevant to paragraph 11 of the Statement of Defence. Including all materials in the above categories which relate to the productions listed in paragraphs 5 and 11 of the Amended Statement of Claim;

• All documents including storyboards, drafts, scripts, notes and related material used in the productions listed in paragraphs 5 and 11 of the Amended Statement of Claim;

• All documents including any written materials, including contracts, instructions, and memoranda relating to the costume design, set design, cinematography, lighting, stage direction and props, related to the productions listed in paragraphs 5 and 11 of the Amended Statement of Claim;”

[57] Another proposed production requested by the defendants was:

“All documents including any correspondence or other communications, notes, memoranda, and contracts including drafts, relating to any communication or potential relationship between the plaintiffs and CBC, Netflix, and any other television broadcast or distribution platform in the past 5 years;”[my emphasis]

[58] It is unclear to me how much of this information would assist in demonstrating the necessary elements of the Defendants’ position regarding the plaintiff’s alleged copyrights.

IX. Four Main Areas of Disagreement

[59] Ultimately, as enumerated in the defendants’ factum, I had to address four specific areas of disagreement between the parties' respective discovery plans:

“(a) Whether the Plaintiffs are required to produce any documents. This is the most crucial area of disagreement;

(b) Whether the Defendants are required to produce development agreements between any of the Defendants and CBC and/or Netflix and/or the Anne of Green Gables Licencing Authority ("AGGLA");

(c) Whether the Plaintiffs and Defendants are to be granted the same number of hours for examinations for discovery; and

(d) The deadlines for delivering Affidavits of Documents and for conducting examinations for discovery.”

I now turn to a consideration of each of these four elements.

(a) Whether the Plaintiffs are required to produce any documents.

X. Plaintiffs’ Position on Proportionality

[60] In the plaintiffs’ factum they submit, with respect to the degree of documentary production sought, that:

32. The principle of proportionality has been codified in the Rules and must be considered in determining the appropriate scope of discovery. This request by the Defendants is neither justified and/or proportionate.

[61] As well they note that under the Copyright Act, there are a number of presumptions in respect of proof of copyright.

Presumptions respecting copyright and ownership

34. l (1) In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it,

(a) copyright shall be presumed, unless the contrary is proved, to subsist in the work, performer's performance, sound recording or communication signal, as the case may be; and

(b) the author, performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright.

[62] The Plaintiffs further submit that the Defendants have pleaded “no material facts in support of their allegation that Sullivan does not own the copyright in Anne Works.” As well they assert that a party should not be compelled to respond to bald pleadings challenging copyright in the absence of sufficient material facts.

[63] In this respect, they cite the decision of Oakley Inc v Shoppers Drug Mart Inc, [2001] FCJ No 415, 2001 FCT 226, 2001 CFPI 226, [2001] ACF no 415, 201 FTR 258, 104 ACWS (3d) 287. Blanchard J. sitting on the Federal Court of Canada - Trial Division specifically dealt in that case, inter alia with the impact of the “Ownership of Copyright”:

32 On the matter of ownership of Copyright, counsel for the defendant argues that this Court should order that the plaintiffs provide particulars of how title moved from the original author to the plaintiffs, produce any assignment documents in respect of the copyright and provide particulars of the date on which the alleged artistic work was created.

33 The production of a certificate of copyright registration creates a rebuttable presumption of title and ownership. Absent any evidence to the contrary, the chain of title may well be irrelevant. As stated by the Supreme Court of Canada in the Circle Film Enterprises Inc. decision [Circle Film Enterprises Inc. v. Canadian Broadcasting Corp. 1959 CanLII 74 (SCC), [1959] S.C.R. 602]:

In my opinion, therefore, by the production of this certificate and in the absence of any evidence to the contrary, the plaintiff in this case has satisfied the burden of proof, both the primary burden -- that which rests upon a plaintiff as a matter of substantive law and is sometimes referred to as the risk of non-persuasion -- and also the secondary burden, that of adducing evidence (...)

34 I therefore find that, at this stage of the proceedings, the pleadings are sufficient and I will not order further particulars on the issue of ownership of copyright.

[64] Based upon the evidence placed before me, and the guidance of the foregoing case, I largely accept and adopt the submission by the plaintiffs that the scope of discovery requested by the Defendants on this issue is disproportionate and will, as well, unduly increase expenses for both parties and further delay the proceedings.

[65] However, as we are still in early stage, I determined to direct a limited degree of disclosure at this point in time, with regard to some of the items sought. I am directing this limited production in order to establish the actual difficulty of production together with the nature and extent of the information sought by the defendants.

XI. “Test Cases”

[66] What I am saying is that there is a need, at this point in the litigation, to identify a group of sample situations, where production of documents and other material has been sought by the defendants. A selection of those items ought to be provided as “Test Cases” assisting inter alia in any future determination of availability of data of the nature sought.

[67] Paragraph 34 of the Statement of Claim, addressing these items, reads:

“Each and every taking from any of the Anne Works and Avonlea Works constitutes a substantial taking.”

[68] As examples of 4 of those items in issue, I have in mind, are contained in paragraph 31 of the Statement of Claim which reads:

31. Episode 5 of "Anne" contains infringements of the original distinctive aspects of the Sullivan Works, including:

(a) copying the concept and scene of the class spelling bee to establish the rivalry between Anne and Gilbert Blythe from Anne 1;

(b) copying the concept and scene of the class spelling bee to establish the relationship between the teacher, Mr. Phillips and Prissy Andrews from Anne l;

(c) copying the scene following the class spelling bee where Gilbert Blythe congratulates and embarrasses Anne for beating him in the spelling bee from Anne 1;

( d) continued copying of the costumes, locations, and set production design referred to above unique to the Anne Works and the

[69] This extract gives some idea of the kind of issues the Defendants are to meet, full particulars of which were sought by them.

[70] Again, applying proportionality, at least at this stage, I am limiting the number of items on the desired production list. In doing so I am establishing a relatively small number of items in my production quantum, taking into account the assertion based on the Copyright Act (discussed above) that requires copyright, when registered, to be taken as having been established.

[71] As a consequence, I identified some 50 individual infringements pleaded by the plaintiff in paragraphs 27 to 33 of the Statement of Claim. Within those paragraphs there are a number of subitems, described in the claim. I am thus directing that, at this stage, roughly 20% of those instances would provide a representative sample, which might be helpful in addressing the determination of the extent of such production that might ultimately be justified.

[72] The Defendants shall within the next 20 days, select 10 instances from those works, identified by the Plaintiff in subparagraphs between 27(a) through 33(b) of the Claim, relating to alleged breaches of copyright by the Defendants.

[73] For the selected 10 items the Plaintiff shall produce what is available for all items with respect to the information sought in items 1 to 3 of the disputed components of the Discovery Plan as set out in Section VIII of these reasons.

[74] To the extent elements of the selected ten categories existed, but no longer were preserved, a reasonable description of why those categories are no longer available should be provided.

[75] For example, what I have in mind is that, if the Plaintiffs (directly or indirectly) didn’t keep the sketches for the subject elements, the response should indicate whether there were ever any, and if so, when were they disposed of.

[76] To be clear I am not requiring production of the full range of items in situations proposed by the defendants. I, however, am not in any way preventing the plaintiff from producing any documentation might have a bearing upon the overall case. My intent is rather to avoid excessive, possibly irrelevant, production on an onerous scale.

XII. Financial and Other Disclosure by Plaintiff

[77] As well there is a separate area of requested productions dealing with components of the plaintiffs’ damage claim.

[78] In the Defendants factum they assert that Plaintiffs must produce revenue statements and communications with media companies. Specifically they argue:

24. The revenue statements for the Sullivan Works are also relevant and producible. The Plaintiffs have claimed $10 million in damages. The Plaintiffs' revenue statements are relevant to showing how much money the Plaintiffs have lost since the Northwood Anne Works was released; or whether the Plaintiffs' revenues have actually increased since the Northwood Anne Works were released, because its release generated a renewed interest in the Sullivan Works.

25. Furthermore, as Sullivan is asserting prejudice to his "honour and reputation," production of his financial statements to show any reputational harm suffered (or not) as a result of the Defendants' conduct, is essential.

[79] It seems to me that a fair compromise in this area would be to require reciprocal financial production of the data sought by each side but on a lawyers’ and experts’, “eyes only basis”, unless the parties agree otherwise or a further order from the court is obtained.

[80] On that basis, I am directing production of at least a meaningful sample of Monthly revenue statements for all revenue from the productions listed in paragraphs 5 and 11 of the Amended Statement of Claim in the last 5 years, including revenues from merchandise, licencing, royalties, DVDs, online sales, and any other form of revenue.

[81] As well, I am ordering production of evidence created (prior to the first broadcast of any episode of the Defendants’ productions) any written communications, including emails, memoranda and other, by anyone at Sullivan Entertainment Inc, including but not limited to Kevin Sullivan, relating to season 1 of the Defendant's television productions of "Anne" (the "Northwood Anne Production"). This order is intended to be subject to further review, if appropriate, following the conducting of the discoveries outlined below.

[82] As well, I note that, applying proportionality, I am not prepared to require production at this stage of this further material which was also sought:

“… communications between the Plaintiffs and media or distribution companies are relevant to the question of whether the Plaintiffs may have had the opportunity to generate additional revenue based on this renewed interest in the Sullivan Works and the story of Anne of Green Gables.”

(b) Whether the Defendants are to produce development agreements

XIII. Scope of Discovery of Defendants

[83] The Anne of Green Gables Licensing Authority (“AGGLA”) is an agency holding certain trademarks and copyrights in respect of the original work of Lucy Maud Montgomery.

[84] I accept, to a degree, the plaintiff’s arguments within their factum addressing whether the Defendants are required to produce development agreements between any of the Defendants and CBC and/or Netflix and/or the Anne of Green Gables Licencing Authority.

[85] Upon consideration, I determined that I am not prepared to accept the arguments of the defendant’s counsel in their factum regarding the extent of production by the defendant in this area. They submitted:

ii. Defendants' Development Agreements

26. The Defendants submit that "Development Agreements between any of the Defendants and CBC and/or Netflix and/or AGGLA" should not be included in the materials to be produced by the Defendants. The parties have already agreed that the Defendants will produce "Any correspondence and agreements between the defendants and CBC and/or Netflix relevant to the specific allegations in the pleadings (or reduced to writing) including information provided by the CBC to any of the defendants". This renders the disputed point redundant, except with respect to agreements with AGGLA.

27. Agreements between the Defendants and AGGLA, to the extent any exist, are not relevant to the action. Specifically, they have no bearing on the Plaintiffs' copyright and moral rights claims, or on the claim for damages. Any such agreements would contain confidential and sensitive commercial information which, if disclosed, would prejudice the Defendants and AGGLA, while providing no relevant information to the Plaintiffs.

[86] I find the arguments of the plaintiffs, set out below, to be more persuasive:

39. CBC and Netflix agreed to reproduce and fund the production and to air them. AGGLA, the Anne of Green Gables Licensing Authority, is an agency holding certain Trademarks and copyrights in respect of the original work of Lucy Maud Montgomery. Any agreement between the Defendants and AGGLA would be in relation to intellectual property rights.

40. These agreements go to the heart of the arrangements between these entities and must of necessity touch on the copyright issues at stake.

[87] While I do not accept the main argument in this regard by the defendants I am prepared to adopt their alternative suggestion with respect to the manner by which the parties ought to deal with the subject matter in this area. That alternative suggestion of the Defendants, in this regard reads:

28. Alternatively, if this Court finds that such agreements (if they exist) are producible, the Plaintiffs must identify in what respect the agreements are relevant, so that Defendants' counsel may redact the agreements to protect sensitive commercial information and information which is not relevant to the action.

[88] Subject to the foregoing limitation, I therefore adopt the proposed language drafted by the plaintiff with respect to “Intended Scope of Documents to Be Produced by Defendants” requiring the defendant to produce Development Agreements between any of the Defendants and CBC and/or Netflix and/or AGGLA.

(c) Whether the Plaintiffs and Defendants are to be granted the same number of hours for examinations for discovery

[89] The Defendants submit that both the Plaintiffs and Defendants should have 10 hours to conduct examinations for discovery. The Plaintiffs' Discovery Plan on allocates 15 hours to the Plaintiffs for oral examination, while allocating only 7 hours to the Defendants.

[90] I accept the Defendants’ submission that this case is complex from both sides, and the parties should have equal total time periods available for their oral discoveries.

[91] Each side shall be limited to a total of 14 hours (being roughly 2 days for each side) for the examinations they choose to undertake of the parties opposite.

(d) Dates for Documentary and Oral Discovery

[92] The Defendants assert that they “have agreed to produce documents including correspondence, scripts, notes, and other material related to the production of the Northwood Anne Works, which is voluminous.”

[93] Having regard to my regrettable delay in releasing these reasons and the submissions of the parties, I am giving both sides until October 31 to complete their productions. I expect both sides will endeavor to produce tranches of materials as they become available to expedite their respective preparation for the examinations for discovery.

[94] With regard to the timing of the examinations I anticipate that counsel will work out a mutually satisfactory timetable. If disputes arise I will convene a telephone scheduling conference, if requested to fix appropriate dates.

XIV. Postscript: Final Offer Selection for Contested Discovery Plans

[95] This was the first case to come before me following the rule amendment which allows the parties to now seek to have the court to impose a discovery plan, where they are unable to agree upon one.

[96] It will be recalled that the rule continues to deal with the consequences of a failure to agree to plan:

29.1.05 (1) On any motion under Rules 30 to 35 relating to discovery, the court may refuse to grant any relief or to award any costs if the parties have failed to agree to or update a discovery plan in accordance with this Rule.

[97] Under the current amendment to the rule, if the parties fail to agree to a discovery plan in accordance with this Rule, the court may order that examinations for discovery be conducted in accordance with a discovery plan established by the court, which may set a schedule for examinations and impose such limits on the right of discovery as are just.

[98] This provision is now a right under the rule. While an application to the court may avoid long delays arising from the parties being unsuccessful in negotiating a plan, motions seeking intervention as regularly item will add to the motion load of the court.

[99] Moreover, the amended rule frees the parties from a number of otherwise applicable obligations under the previous version of the Rule.

[100] In relatively routine disputes the court can, for example apply “the usual terms” in civil actions arising from a motor vehicle accident.

[101] The difficulty in a case such as the present matter, where the applicable law is complex and the claims somewhat novel to choose in its entirety, either side’s version of the appropriate “production regime” at a very early stage.

[102] Selecting between well reasoned legal positions with very limited productions and only the pleadings can place onerous responsibilities on the court.

[103] Here $10 million is claimed and a one-hour motion with diametrically opposed approaches from counsel needed to be addressed. The present system is not well equipped for such a task.

[104] My concern is for court resources and the protection of the positions of both sides with regard to what is to be produced, and on what basis.

[105] The parties know their case best. What is to be done to facilitate the process?

[106] While considering the present case it struck me that the possibility of undertaking tasks under the newly amended rule for Discovery Plans, might effectively utilize the approach of a ‘baseball style” arbitration.

[107] Under that system the arbitrator may not pick a “middle ground”. Rather, the result must be a selection of one or the other side’s position in its entirety. While that might work for a single establishment of an appropriate contract dollar value, the present process requires some regard to applicable nuances.

[108] As a consequence, I am proposing that if the parties are seeking the Court’s assistance in establishing a discovery plan they should each define the nature and extent of the categories of production they assert is appropriate for each area of production sought by each side.

[109] Thus, each ach party would describe its proposal for the terms relevant to a specific type of information sought. For example, for production of previous record medical records, one side might propose three years pre-accident while the other proposes 10 years.

[110] To facilitate this process, my concept would be that, except in most unusual circumstances, the court’s normal approach should not be to “split the difference”. the parties should expect the court will choose the “most practical and reasonable” of the two choices proposed by the parties in each category of production.

[111] The conventional wisdom is that such an approach forces both sides to strive to be more reasonable in selecting their proposed time. Establishment of a discovery plan while avoiding a detailed analysis by the court of the specific minutiae of the competing alternatives for each component of the Discovery Plan will save costs and expedite the process.

[112] In closing, I raise another concern to be addressed in the future. For example, if either party was dissatisfied with a ruling with respect to production at this point in time, are they obliged to bring an appeal that would further delay the proceeding or is the extent of production still able to be revisited at a later stage of the action. In my view the latter path is more in keeping with the mantra of Rule1.04 to seek to follow the least expensive and most expeditious path to an appropriate result.

XV. Conclusion

[113] I am obliged to counsel for their professional submissions and assistance in this particular matter.

[114] I believe that they will now be able to craft a Discovery Plan that reflects the elements they had previously agreed upon together with the directions and guidance contained in this decision. Neither side won this motion. Rule 29.1.05 allows me to refuse to grant any relief or to award any costs if the parties have failed to agree to or update a discovery plan in accordance with the Rule. However, they have now addressed the matter of crafting a Discovery Plan by implementing a method consistent with the present language of the rule.

[115] As a consequence, I determined to award costs of this motion in an amount to be agreed upon by the parties, (or provided to me to choose between). The determined amount to be payable as costs in the cause of the main action.

[116] Once the various elements in this section of my decision have been resolved between the parties, I will be prepared to execute an appropriate Order as crafted by the parties.

R. 272/DS __________________

Master D.E. Short