COURT FILE NO.: CV-17-438-00SR

DATE: 2020-02-14

ONTARIO

SUPERIOR COURT OF JUSTICE

B E T W E E N:

1422986 Ontario Limited operating as Northern Homes Designs

J. Lester, for the Plaintiff

Plaintiff

• and -

1833326 Ontario Limited operating as Syncor Contracting Limited and Jeremiah Gammond operating as Gammond Architectural Technology

J. Carpino, for the Defendants

Defendants

HEARD: August 13, 14, 15 & 16, 2019, at Thunder Bay, Ontario

Madam Justice T. J. Nieckarz

Reasons For Judgment

OVERVIEW:

[1] This case is about the copyright of architectural designs and drawings.

[2] The Plaintiff, owned and operated by Alan Cooke, designed townhomes to be built by the Defendant, 183326 Ontario Limited operating as Syncor Contracting Limited (“Syncor”) in Thunder Bay, Ontario. The design was embodied in twenty-six drawings (the “Drawings”).

[3] Several years later, Syncor built another townhome project in Fort Frances, Ontario, for which it hired a different architect to design the project; the Defendant Jeremiah Gammond operating as Gammond Architectural Technology (“Gammond”).

[4] The Plaintiff claims that Syncor and Gammond copied its design that he had originally done for Syncor’s Thunder Bay project; that the design is substantially the same with only minor modifications. The Plaintiff asserts a copyright interest over the design that was incorporated into the Drawings.

[5] The Plaintiff claims that by copying its design, the Defendants infringed its copyright interest. The Plaintiff seeks declaratory relief, injunctive relief, statutory and punitive damages and other remedies for the alleged infringement.

[6] The Defendants do not deny copyright over the drawings. They do deny that there was an infringement. The Defendants argue that the Gammond design and drawings were sufficiently different from those of the Plaintiff to warrant a finding that there was no infringement. Furthermore, to the extent that the designs are similar, it is simply because the Plaintiff’s design contains elements common to the design of townhomes.

[7] For the reasons set out below, I agree with the position of the Plaintiff.

THE FACTS:

[8] In 2010, 2011 and 2012 Syncor hired the Plaintiff to prepare drawings for three townhome projects to be built on Weiler Boulevard, in the Parkdale subdivision, in Thunder Bay, Ontario (the “Weiler Boulevard project”). This was not the first project they had worked on together, but for some unknown reason it became the last.

[9] Alan Cooke (“Cooke”) is a certified architectural design technician and a certified engineering technician. He has approximately thirty-years’ experience.

[10] On September 17, 2010, Don DeMichele (“DeMichele”), owner of Syncor, met with Cooke to review the project.

[11] It was at this meeting that DeMichele provided Cooke with drawings prepared by another architect, Bradford Green and asked him to design a four-unit townhome project based on the drawings, subject to some modifications and different items that DeMichele wished to have. During the meeting they discussed the overall concept and details such as how many bedrooms, the nature of the kitchen and the general size of the units desired by DeMichele.

[12] The evidence of Cooke is that the Bradford Green plans were not suitable for the Weiler Boulevard project and the items that DeMichele wanted, such as the number of bedrooms. Cooke communicated this to DeMichele. Cooke states that he offered to design a new plan, based on DeMichele’s expressed preferences. In doing so, Cooke considered those elements of the Bradford Green plans, that DeMichele liked and incorporated the footprint of the design. The footprint represents the area and configuration, or the pattern the building leaves on the ground.

[13] Cooke proceeded, on the spot, to create a rough sketch for the project that consisted of three-bedroom, split-level townhomes that had a cab-over design. A “cab-over” is where a room is placed directly over the garage. In this case, it was a bedroom.

[14] Cooke testified that he used his knowledge base and experience to create the design that incorporated all the elements DeMichele sought during their conversation that day. Cooke’s evidence is that other than the footprint, the design was significantly different than the Bradford Green plans. DeMichele was happy with the way Cooke incorporated the elements he sought, and with the suggestion of the cab-over design.

[15] DeMichele approved the preliminary sketches at this initial meeting. Following this approval, Cooke spent several hundred hours converting the sketches from a concept, to detailed design and construction drawings. He completed three sets of drawings by December 16, 2012.

[16] The Plaintiff charged a total of approximately $11,600 for Cooke’s work on the Drawings. This figure is not exact as the Plaintiff was unable to locate all invoices.

The Nelson Street Project:

[17] In December of 2015, Syncor retained Gammond with respect to the design of a project on Nelson Street in Fort Frances, Ontario (the “Nelson Street project”).

[18] The evidence of Gammond is that he provided Syncor with various options for the Nelson Street project between December 2015 and March 2016. Those options included townhome and apartment buildings.

[19] One of the options Gammond offered was outlined in an email between the Defendants on March 1, 2016. Gammond indicated in that email that he had prepared a rough sketch for a townhome project with the overall size and shape similar to Weiler Boulevard, but slightly wider. He also indicated that he would put all three bedrooms upstairs in the unit, which was different from the Weiler Boulevard design, and improve the kitchen/dining/living room space on the main floor.

[20] In response to Gammond’s proposed design, DeMichele indicated that he wanted to “keep them as they were” with a split entry and cab-over bedroom design. Presumably this comment was made in reference to the Weiler Boulevard design.

[21] Gammond proceeded to design the Nelson Street drawings, which he completed on May 18, 2016. There are nine drawings in total.

[22] The Nelson Street project came to the Plaintiff’s attention when Cooke saw an article about the townhome project in a Fort Frances newspaper. The article had a photograph of a billboard advertising the townhomes, with an illustration of what the townhomes were expected to look like.

[23] Upon seeing the illustration depicted on the billboard photograph, Cooke believed that it was strikingly similar to an illustration he had prepared for Syncor for the Weiler Boulevard project back in October of 2011. Once he compared them, he took the position that they are the same in everything from unit arrangement, to window location, to roof design, to the door location, to the siding and even the landscape and sky graphics.

[24] Cooke then began to investigate further and was able to obtain copies of the schematic drawings of the Nelson Street project from a realtor website. He eventually obtained a copy of the construction drawings for the Nelson Street project and took the position that subject to some minor variations, the overall design of the Nelson Street project is substantially similar to his design for Weiler Boulevard.

THE ISSUES:

[25] The parties agree that this case raises three primary issues:

a) Does the Plaintiff have copyright over the Weiler Boulevard design and drawings?

b) If the answer is yes, was the Plaintiff’s copyright infringed by the Defendants or any one of them?

c) If there was an infringement, what is the appropriate remedy?

LAW AND ANALYSIS:

Issue #1: Does the Plaintiff have copyright over the Weiler Boulevard design and drawings:

[26] The Plaintiff takes the position that the Weiler Boulevard design and drawings are a creation of his skill and judgment; that he took the various elements requested by DeMichele and those required by the Ontario Building Code and arranged them into a unique and original design. He is, therefore, the exclusive owner of a copyright over the design and drawings, with the exclusive right to reproduce or authorize the reproduction of his work.

The Legal Framework:

[27] Copyright confers property in the expression of an original creation. It protects the expression of ideas once they are manifested in permanent form. It represents the sole right to produce or reproduce a work and prohibits others from making copies of the protected work. See: s. 3(1) of the Copyright Act, R.S.C., 1985, c. C-42 and Arthur M. Grant, Beverly M. McLachlin & Wilfred J. Wallace, The Canadian Law of Architecture and Engineering, 2nd ed. (Markham: Butterworths, 1994) at pp. 264 and 266.

[28] Section 5(1) of the Copyright Act provides that copyright shall subsist in Canada in every original literary, dramatic, musical and artistic work.

[29] Section 2 of the Copyright Act defines “artistic work” to include “plans” and “architectural works”. “Architectural works are further defined as “any building or structure or any model of a building or structure.

[30] Section 34.1(1)(a) of the Copyright Act creates a rebuttable presumption in favour of a copyright.

[31] The protection offered by copyright law is provided automatically without the necessity of registration or other formalities. However, the work must be original; this is the foundation of copyright. It must be independently created and not a copy of the work of others. See: The Canadian Law of Architecture and Engineering, 2nd ed. at pg. 264.

[32] In CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 at para. 16, McLachlin CJ (as she then was) explained the meaning of original in the context of the Copyright Act:

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.

[33] House designs and drawings have been recognized as being subject to copyright protection. See: Hay and Hay Construction Co. v. Sloan, 1957 CarswellOnt 27 (Ont. S.C.) and Chancellor Management Inc. v. Oasis Homes Ltd., 2002 ABQB 500 at para. 27.

[34] To engage copyright protection, the architectural plans do not need to be unique in the sense that the various elements of the design have never been seen before. See: Chancellor Management Inc. v. Oasis Homes Ltd., at para. 35.

[35] If the arrangement or compilation of these various elements requires the exercise of skill and judgment, then the work may be afforded copyright protection even though the author holds no copyright over the individual components. See: Construction Denis Desjardins Inc. v. Jeanson, 2010 QCCA 1287 at para. 9,

[36] Ultimately it is a question of whether the plan is the product of the personal effort of its designer as opposed to a purely mechanical exercise. Has the designer assessed and weighed different components to meld them into his own expression of skill and judgment? If so, the mere fact that he sought inspiration in pre-existing ideas does not preclude a finding that the design is original. See: Construction Denis Desjardins Inc. v. Jeanson, at paras. 5, 6 and 13.

[37] A distinction must be drawn between ownership of drawings, specifications and other documents used in the construction of a work versus ownership of copyright. Ownership of the physical drawings and related documents is often governed by the contract between the architect and engineer and the client. Ownership of the copyright refers to ownership of the expression of the idea embodied in the drawings and the right to reproduce them. See: The Canadian Law of Architecture and Engineering at pg. 264.

[38] The physical drawings are usually owned by the client once they have paid for them. However, absent agreement to the contrary, the architect who created them generally retains ownership of the copyright in them and in the design embodied in the structure. This prohibits the client from repeating the design in a new structure without the architect’s consent. See: The Canadian Law of Architecture and Engineering at pg. 265.

Analysis:

[39] The Plaintiff is presumed to have copyright in the Weiler Boulevard design embodied in the drawings. The Defendants have the onus of proving the contrary.

[40] The Defendants in their pleading claimed that Syncor held the copyright over the Weiler Boulevard design and drawings. At the conclusion of the Plaintiff’s case they abandoned this position and conceded, that based on the law and evidence in this case, the Plaintiff does have copyright over the Weiler Boulevard drawings; they concede that the drawings are the product of Cooke’s skill and judgment.

[41] The Plaintiff suggests that the Defendants are only conceding copyright in the drawings but not the design embodied in the drawings. As the caselaw above points out, it is the expression of an idea as reflected in the drawings that is protected.

[42] The Defendants have stated that they concede copyright and the sole issue is infringement. I take this to mean they concede that copyright subsists in favour of the Plaintiff in the design embodied in the drawings. If I have misunderstood the Defendants’ position, I would find that copyright subsists in any event.

[43] Based on the legal framework as set out above, it is clear that the Plaintiff’s work is original in the sense that it is not copied. The Bradford Green drawings are considerably different. Furthermore, while I accept that many of the components contained in the Weiler Boulevard design are not unique or original themselves, the design concept represents a compilation of these various architectural components that was created by the Plaintiff’s skill and judgment and was not purely a mechanical exercise. They represent choices that he made with respect to design, based on features Syncor indicated it wished to have. I find that copyright in the design and drawings subsists with the Plaintiff.

Issue #2: Was the Plaintiff’s copyright infringed:

[44] The issue then becomes whether the Defendants have infringed the Plaintiff’s copyright both with respect to the Nelson Street drawings and the billboard erected to promote it.

The Legal Framework:

[45] Section 27(1) of the Copyright Act provides that, absent consent of the owner, it is an infringement of copyright for a person to do anything that only the owner has the right to do.

[46] The unauthorized reproduction of a substantial part of an original work constitutes copyright infringement, for which the copyright owner may seek remedies. See: Cinar Corporation v. Robinson, 2013 SCR 1168 at para. 1.

[47] If there is copyright in a house design, the client may not reproduce the plans or repeat the design in a new structure without the original architect’s consent. See: The Canadian Law of Architecture and Engineering at pg. 265 and 269.

[48] The onus is on the Plaintiff to prove copyright infringement by proving a copying of the work by the Defendant, or a substantial part thereof. Access to the copyright protected work usually must be proved but is not an issue in the case at hand. See: U & R Tax Services Ltd. v. H & R Block Canada Inc., [1995] F.C.J. No. 962 at para. 35.

[49] What constitutes a ‘substantial part’ of the work is a question of fact, determined in relation to the originality of the work that warrants protection under the Copyright Act; it represents a substantial portion of the author’s skill and judgment expressed in the work. See: Cinar Corporation v. Robinson at para. 26 and U & R Tax Services Ltd. v H & R Block Canada Inc., at para. 35.

[50] In conducting the substantiality analysis, it is important not to deal with the copied features piecemeal; do not dissect the work into its component parts to determine whether each individual component is original, protected and infringed. Rather, the inquiry should focus on a holistic assessment of the essence of what makes the work original. It is the cumulative effect of the features copied that must be considered in determining whether there has been an infringement. See: Cinar Corporation v. Robinson, at para. 36.

[51] Using architectural plans as a basis to prepare a version that is substantially the same but in a modified form is a breach of copyright. See: Webb & Knapp (Canada) v. Edmonton (City), 1970 CanLII 173 (SCC), [1970] S.C.R. 588 at para. 43 and Normand Tamaro, The 2015 Annotated Copyright Act, 2015 ed. (Toronto: Carswell, 2014) at pg. 604.

[52] If, however, the presumed infringer simply arrived at the same result by using his own skill and judgment, there is no copyright infringement. A defendant can rebut the presumption of infringement when there are two similar works merely by proving that his own work owes nothing to the copy, or by demonstrating the use of a standard practice that could, separate from plagiarism, lead to the same or a similar result. See: Constructions Denis Desjardins inc. c. Jeanson, at para. 29.

Analysis:

[53] The Plaintiff concedes that the Nelson Townhome is not an exact replica of the Weiler Townhomes. The question I must determine is whether the townhomes are substantially the same, but in a modified form, and if so, whether they are the same as a result of the Plaintiff’s design having been copied by the Defendants.

Evidence:

[54] There was a significant amount of evidence adduced at trial relating to the alleged similarities and differences between the two townhome projects. Cooke and Gammond each gave evidence. DeMichele did not testify. Each of the Plaintiff and the Defendants retained experts to opine as to the similarities and differences between the two projects at issue, and the uniqueness or lack thereof of the various design elements incorporated into the Weiler Boulevard design and drawings.

Cooke:

[55] Cooke testified that when he first obtained the schematic drawings for the Nelson Street project, he was immediately struck by the similarities and he became upset. In his view, the overall layout, design and shape of the Nelson Street project was so similar to Weiler Boulevard that he immediately drew the conclusion that his design had been copied without his permission.

[56] Cooke further testified that virtually everything between the two projects was the same, including the outside design features and cab-over design. Even inside the townhomes, when he compared the size, shape, orientation of the rooms for Nelson Street, and even certain design features such as the angle of the door going into the utility room, the orientation of the closets and layout of the bathroom, they were very similar to his design. There were some minor differences such as the elimination of a walk-in pantry and main floor utility room and the placement of a toilet and bathtub, but otherwise his observation was that virtually everything in the Nelson Street schematic drawings was the same as the Weiler Boulevard project.

[57] Cooke acknowledged that there were some differences that were necessitated by Ontario Building Code amendments made after the Weiler Boulevard drawings were completed. He also acknowledged that there were some differences in the construction drawings that were reflective of different materials chosen for Nelson Street, but the design and the flow of the building, including room sizes all remain the same as Weiler Boulevard.

[58] Cooke further acknowledged that there are certain individual features of the Weiler Boulevard design, that in of themselves are not unique. These include, but are not limited to: covered entrances, a bedroom downstairs, the placement of a bathroom downstairs beside the family room, a bathroom off the utility room, a deck off the living room, bathrooms next to a kitchen, bedrooms on an exterior wall and a front door beside the garage.

Plaintiff Expert Nalezyty:

[59] Reginald Nalezyty (“Nalezyty”) has been an architect since 1985. He has a number of other qualifications. He was qualified in this matter as an expert in the area of building design.

[60] The opinion of Nalezyty was that there is no significant difference between the basic design elements of the Weiler Boulevard and Nelson Street projects. There is no significant difference with the footprint, the dimensions, configurations of the rooms, outside features such as garage location, and window size and location. Nalezyty concluded that Weiler Boulevard and Nelson Street were basically the same units with minor differences. These differences fall within the scope of customized personal options, changes necessitated by different building materials, or marginal changes that do not change the room dimensions or layout or the overall plan and design. Essentially, it is the same design with minor changes.

[61] In examination-in-chief Nalezyty did a virtual walk through of the two townhome projects and described the similarities and differences of the Weiler Boulevard and Nelson Street units. He noted:

• The building footprint is virtually identical;

• The configuration of rooms is identical;

• He identified five minor differences on the main floor design, but considered them to have a negligible impact on overall design;

• He noted that the stair, landing and room layout for the second floor is identical. In his opinion, there were unique features of the Plaintiff’s design with respect to the stair layout. While he could not say whether this design feature had been used by others previously, Nalezyty opined that the design seemed sufficiently unique to lead him to conclude that two different designers should not arrive at the same dimensions and same arrangements if they were acting independently;

• He noted that the available space and room arrangement for the basement is similar;

• There are different outside finishes for the building, but this is not fundamental to the design and layout of the building;

• There were some differences in the size and design of the door to the deck and the size and glazing on the windows. However, in Nalezyty’s opinion, these were not measurable differences;

• The Nelson Street design had doormers, or triangular peeks over the deck on the back that do give a building a different look;

• There was a different deck and stair arrangement, although both used a deck and stair arrangement in the back of the home; and

• With respect to the arrangement of rooms within the units, the Nelson Street drawings show a repeated orientation for all five units, meaning the layout of the rooms was the same for each unit. The Weiler Boulevard drawings had a “mirrored” orientation but the overall design in terms of the location of spaces within the unit remained the same.

[62] Overall, Nalezyty acknowledged that while there were many features used by the Plaintiff in the Weiler Boulevard design that were not unique, they are combined in such a way that it would be unexpected to see someone else come up with the same plan and design.

[63] In forming his opinion Nalezyty did not review all the drawings done by the Plaintiff or the Defendants. The Defendants argue that this should result in Nalezyty’s opinion being given very little weight.

[64] With respect to Nelson Street, Nalezyty only reviewed the schematic drawings, and not the complete set of drawings that included the construction drawings. He had not been provided with all of the drawings by the Plaintiff. He reviewed them quickly on the witness stand, although in fairness to Mr. Nalezyty he did not have sufficient time to review them in any detail. His cursory review of the construction drawings was that the overall design of the Nelson Street townhome was not sufficiently different in the construction drawings than it was in the schematic drawings and therefore his opinion was unchanged.

Gammond:

[65] Jeremiah Gammond has been an architectural technologist since 2000. He was a draftsperson prior to that. He has his own practice, is a registered interior designer and is a member of the Ontario Association of Architects. He is currently completing the requirements to become an architect.

[66] Gammond testified that he was approached by DeMichele in 2015 with respect to a potential residential home project in Fort Frances. He was provided with a copy of the Plaintiff’s Weiler Boulevard drawings from Syncor. The Plaintiff himself testified that this is not an unusual practice, and that he too had been given a set of drawings by DeMichele used in another project that contained desirable elements for the design of the Weiler Boulevard project.

[67] Gammond’s evidence was that at first, he did nothing with the Weiler Boulevard drawings. He began his own research with respect to the zoning requirements, explored some design options, drew footprints of a building and then presented it to Syncor. His original design was quite different from the final one. Gammond went back and forth with DeMichele by email with various options for the project before settling upon the final design.

[68] Gammond stated that there were elements of the Plaintiff’s design that DeMichele expressed a desire to have, such as the split-level cab-over design. He testified that he used the Weiler Boulevard drawings in much the same way as Cooke used the Bradford Green drawings; as merely a reference point. Otherwise, there had been building code changes and unique features of this site that rendered the Plaintiff’s drawings of little value in designing the Nelson Street project. The Nelson Street project was reflective of a very different design that Gammond arrived at by using his own skill and judgment.

[69] Gammond described many of the differences between the Weiler Boulevard and Nelson Street designs, but he also acknowledged that the layouts in terms of arrangement of the rooms is substantially the same. DeMichele represented to him that the layout was his design.

[70] He disagreed that the footprint and dimensions were the same. He pointed out other differences, including the roof, the windows, ceiling heights, aspects of the kitchen and of a bathroom, and the building code amendments that necessitated changes.

Defence Expert Stechyshyn:

[71] Cory Stechyshyn (“Stechyshyn”) has been an architect for approximately twelve years. He has other qualifications, including architect technician.

[72] The Plaintiff challenged Stechyshyn’s impartiality given his previous relationship with the former lawyers for the Defendants and with Gammond. The Plaintiff took issue with legal conclusions being drawn in Stechyshyn’s report and argued that he was assuming the role of an advocate. Stechyshyn candidly acknowledged that he had incorporated legal conclusions into his report that were improper. For oral reasons given during the trial, Stechyshyn was qualified as an expert in building design and architecture and the offending portions of his report were struck. Stechyshyn properly confined his oral evidence to the area of his expertise.

[73] The evidence of the Defendant’s expert may be summarized as follows:

• Both the Weiler Boulevard and Nelson Street plans are common layouts for a townhome cab-over design;

• The narrow lots that both projects were constructed upon restricts the layout options and configurations for the residence;

• Ontario Building Code requirements, such as natural light for bedrooms and living room spaces naturally restricts the layout and configuration of the bedrooms and living room;

• Walls are constructed differently for sound control and fire rating purpose, and are insulated differently;

• There are distinct differences in material, construction, window patterns and sizes, the deck is different in the Nelson Street project, there is a different veneer, there is more character and resolution to the roof, more privacy is offered for the deck, the ceiling height is different which gives a feeling of a more open space, there is a different foundation used in Nelson Street that is unique, the utility room is located differently, the kitchen has been reconfigured to flow better, the ensuite and another bathroom have been reconfigured;

• There are similarities in the floor plan layouts between the two designs, with the sequence and arrangement of rooms within the building footprint of both sets of drawings being based on the Weiler Boulevard design (referred to in the Stechyshyn report as Syncor’s “original concept floor plan”). The concept reflected in both designs are closely related;

• There is nothing unique about the staircase design in the Weiler Boulevard design;

• From a building character standpoint, there are similarities with both being two-story, five-unit, narrow lot, cab-over townhouse designs;

• The building footprint is different, although the difference is not substantial. There is a difference of approximately 1% in area between the two projects;

• The design concept is formulated before the construction drawings are done;

• The Gammond design represents a different, more modern approach to the same challenge that Cooke experienced – designing for a narrow lot. The character of his building is different than the Cooke building; and

• The Nelson Street design is not a copy of the Weiler Boulevard design. Given the limitations imposed by the narrow lot upon which the townhomes were built, there is very little different that could have been done with the designs other than flip the location of the living room and bedroom. While it may have been possible to change the configuration of the rooms, and there are different design options that could be used, they would detract from the appeal of the layout and would not be preferable.

Finding:

[74] The Defendant argues that the Plaintiff has failed to prove that the Nelson Street townhome design is a substantial reproduction of the Weiler Boulevard design. Specifically, the Defendant argues that:

a) The evidence of the Plaintiff’s expert should be rejected as he did not see complete sets of either the Weiler Boulevard drawings or the Nelson Street drawings in forming his opinion. The Defendant relies on the following:

i) The Supreme Court of Canada in Robinson c. Films Cinar Inc., states that the “cumulative effects” expressed in the “work as a whole” must be considered. This was not done by Nalezyty who did not review all the drawings. He acknowledged that had he properly done so it is possible his report and findings could change.

ii) In Rains v. Molea, Justice Chiappetta rejected the Plaintiff’s expert evidence and opinion that a comparison of Molea’s paintings revealed they were substantially similar to Rains’ paintings, largely on the basis that the witness did not see the originals of all comparisons. When she did see them at trial she admitted to many differences. The Defendants argue that Rains v. Molea is analogous to this case.

b) Even if the evidence of Nalezyty is accepted, then copyright infringement still cannot be found because those elements of the design that are similar are unoriginal and commonplace designs. The Defendants rely upon Justice Chiappetta’s comments in paragraph 40 of Rains v. Molea:

“[…] 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 parameter in his writing or Drake relying on his use of 16 bars to a verse in his music. 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.”

[75] Conducting a holistic analysis as directed by the Supreme Court of Canada in Cinar Corporation v. Robinson, I find that the Weiler Boulevard and Nelson Street townhome project designs, as reflected in the drawings of the two projects, are substantially similar.

[76] In reaching this conclusion I have considered all the drawings that were filed as exhibits, along with the evidence of both experts. Even as a lay person, one need only look at the drawings of the designs for both projects to be struck by the significant similarities.

[77] I have also considered the evidence of both Nalezyty and Stechyshyn. While I have approached Nalezyty’s evidence with caution given that he did not see the complete set of drawings, including the construction drawings, I am not prepared to discount his opinion entirely. Nalezyty testified that he was able to form an opinion with respect to the similarities and differences in the overall design and layout of the two townhomes from his review of the schematic drawings. While he did acknowledge it was possible his opinion could change upon a detailed review of the construction drawings, he did not change his opinion. His evidence based on a cursory review of the construction drawings while on the witness stand was that they were not sufficiently different from the schematic drawings he had reviewed to cause him to change his opinion. No specific differences between the construction and schematic drawings for either project were put to Nalezyty by the Defendants.

[78] Both experts agreed that the design concept between the two projects is similar. Stechyshyn described them as “closely related” while Nalezyty went further to opine that they were so similar he could not imagine that two different architects would come up with the same design unless the original was copied. Each expert noted the similarities with respect to both projects being five-unit, split-level, cab-over designs and with respect to layout and room arrangement. There were other finer details with respect to placement of various features, angles of doors and the like that were also noted by them.

[79] This does not mean to say that there are not differences between the design and construction of the two projects. Both experts described the differences and while they disagreed as to the significance of these differences, they did not disagree as to what they were. Nalezyty described the differences as “not measurable”, while Stechyshyn concluded that the differences were significant enough to change the character of the Nelson Street townhomes from that of Weiler Boulevard.

[80] I agree with the Plaintiff that the differences described by both experts do not detract from the conclusion that the Nelson Street design is a substantial reproduction of the Weiler Boulevard design. As set out in the caselaw referenced above, the test for infringement of copyright is not that two pieces of work must be identical, but rather that one is a substantial reproduction of the other; infringement can exist despite differences in the details of two projects. Looking at the cumulative effect of these differences, I accept the opinion of Nalezyty that these differences are not significant. These differences do not detract from the fact that the most important parts of Cooke’s work have been reproduced. This is evidenced by the fact that despite some aesthetic, construction, and other changes, the two designs remain observably strikingly similar with respect to the overall concept design and layout as reflected in the style of home, the outside appearance, the relationship of one room to another and the flow of the building.

[81] A substantial reproduction of the Plaintiff’s work having been established by the Plaintiff, the Defendants must demonstrate that the work is the result of an independent creation. See: Lainco inc. c. Commission scolaire des Bois-Francs, 2017 FC 825 at para. 203. I find that the Defendants have failed to do so.

[82] The Defendants argue that even if there are substantial similarities between the two projects, it is only because there is nothing unique about either the layout of the Weiler Boulevard townhomes, or the features such as a cab-over design home. They further argue that there is nothing unique about having a door beside a garage, a bathroom sharing plumbing with a kitchen, a window over the door or garage and other features of the design. I agree with the Defendants in this regard. There was no evidence that each of these, along with other features such as a split-level design, are design features unique to the Plaintiff in that he created them. This was also clear from the evidence of both experts. However, it is not simply the fact that both projects are cab-over designs or have several similar features or common design elements in common that leads to the conclusion that Nelson Street is a substantial reproduction of Weiler Boulevard; it is the arrangement of all these details and the reproduction of how these characteristics were compiled by the Plaintiff into an overall design concept for a multi-unit, split-level, cab-over townhome he created using his own skill and judgment.

[83] The Defendants further argue that the Nelson townhome design is not a copy of the Weiler Boulevard design, but rather a reflection of the fact that there are limited options for the arrangement of the common design features and layout for a narrow lot three-bedroom townhome. The Defendants’ expert opined that there are only really two viable options; one being the Weiler Boulevard concept as modified by Gammond.

[84] I do not accept this argument. The evidence does not support the use of the Weiler Boulevard design for the Nelson Street project out of necessity, but rather choice.

[85] The evidence of Gammond is that he came up with various options that were presented to DeMichele for the Nelson Street project in the email correspondence between them, but ultimately DeMichele rejected these proposals in favour of a design substantially similar to the Weiler Boulevard design. This design was based on Gammond’s views of what would work for the project, had a different configuration for the bedrooms, and would have represented a work based on his own skill and judgment as opposed to a reproduction. DeMichele indicated in email correspondence to Gammond that Syncor had enjoyed success with the Weiler Boulevard design and that this was his preference. It is evident that DeMichele was happy with the response received to the design of the Weiler Boulevard townhomes and wished to repeat it with Syncor’s project in Fort Frances. It was agreed that subject to some changes suggested by Gammond, this would form the basis for the Nelson Street townhome design.

[86] Finally, the Defendants urge me not to find an infringement of copyright on the basis of public policy. The Defendants argue that if I find an infringement, the result of my decision will be to render the use of the common cab-over design unavailable to the general public. I disagree. The Plaintiff has not sought copyright over the cab-over design, but rather over the Plaintiff’s split-level, five-unit, cab-over townhome design as reflected in the Weiler Boulevard drawings. Again, it is not the cab-over feature that the Plaintiff seeks to protect but rather his interpretation of that concept as reflected in the Weiler Boulevard drawings. It is the entire design concept of the project that Cooke seeks to protect and not just one design feature.

[87] With respect to the billboard sign, there is no mistaking the substantial similarities between this, and that graphic illustration that had been completed by the Plaintiff for the Weiler Boulevard project. This graphic illustration was based on the front elevation design contained in the drawings that the Plaintiff have proven were entitled to copyright protection. The reproduction of this design represents an infringement of the Plaintiff’s copyright.

[88] The Defendant argues that the picture was not unique, as admitted by the Plaintiff and that no expert evidence was adduced with respect to the similarities and differences as between the billboard and the Plaintiff’s protected work.

[89] Firstly, the billboard picture was the reproduction of the front elevation drawing that has already been established to be part of the copyright protected works of the Plaintiff. I did not compare the picture to the Plaintiff’s graphic illustration as the Plaintiff did not plead copyright protection over the illustration.

[90] Secondly, expert evidence is necessary only to provide the trier of fact with inferences which would be outside of the knowledge or experience of the trier of fact. See: R. v. Mohan (1994), 1994 CanLII 80 (SCC), 89 C.C.C. (3d) 402 (S.C.C.).

[91] I did not require expert evidence to assist me in arriving at the conclusion that both graphics are strikingly similar depictions of the same design, with only minor and insignificant differences. One only needs to see the graphics to be struck by the substantial similarities. In fact, but for the Nelson Street graphic being depicted in colour, the two illustrations are virtually indistinguishable from each other.

Issue #3: What is the appropriate remedy:

[92] The Plaintiff seeks the following relief

a) Declaratory relief as follows:

(i) That copyright in the Weiler Townhome design and drawings subsists with the Plaintiff; and

(ii) That the Plaintiff’s copyright and moral rights have been infringed by the Defendants.

b) Statutory damages pursuant to s. 38.1(1) of the Copyright Act in an amount determined by this court to be necessary to achieve a just result.

c) Punitive damages in the amount of $20,000.

d) An injunction prohibiting the Defendants from using the Weiler Townhome or Nelson Townhome designs and from publicly displaying the billboard sign.

e) Delivery up of the copies of designs and construction drawings for the Weiler Townhome and Nelson Townhome projects, as well as the billboard sign.

f) Pre-judgment and post-judgment interest in accordance with the Courts of Justice Act, R.S.O. 1990, c.C.4.

Analysis:

[93] Section 34(1) provides that where copyright has been infringed, the owner of the copyright is entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that may be conferred by law for the infringement of a right.

Declaratory Relief:

[94] Declaratory relief is appropriate if there is a copyright that has been infringed. See: Rains v. Molea, 2013 ONSC 5016 at para. 91.

[95] The Plaintiff argues that this, combined with injunctive relief is the most important relief sought in this case; it will prevent further infringements of the Plaintiff’s rights. I agree.

Statutory Damages:

[96] The Plaintiff acknowledges that it failed to prove any precise amount of damages arising from the copyright infringement. Cooke estimated that he would have charged a maximum of $6,500 for new drawings on the Nelson Townhome project, but he could not say with any certainty what the exact fee would have been. The Plaintiff’s pleading similarly estimates the fee charged for the use of the Weiler Boulevard drawings to be $6,500. There was also no evidence from Cooke or Gammond as to the profit, anticipated or realized, from the job.

[97] The Plaintiff seeks statutory damages in the amount of $20,000.

[98] Section 38.1(1) of the Copyright Act permits a copyright owner, at any time before judgment is rendered, to elect to recover an award of statutory damages instead of actual damages and profits. The range provided for by statute is a minimum of $500 and a maximum of $20,000, determined by the court based on what is necessary to yield a just result for the infringements proven. See: also Collett v. Northland Art Company Canada Inc., 2018 FC 269 at para. 59.

[99] Section 38.1(5) of the Copyright Act sets out the following factors for consideration in assessing statutory damages:

a) The good faith or bad faith of the defendant;

b) The conduct of the parties before and during the proceedings; and

c) The need to deter other infringements of the copyright in question.

[100] Statutory damages are to be determined on a case by case basis, with respect to all infringements involved in the proceedings for each work. Mid-range or high-range statutory damages are saved for limited cases involving aggravating factors, including repeated infringements, flagrant violations of Court orders or other such conduct, and taking into consideration profits to the infringer. See: Young v. Thakur, 2019 FC 835 at paras. 41, 50 and 65.

[101] Keeping in mind the general principle that damages should put a party in the place they would have been in but for the violation of their rights, I find that $6,500 is the appropriate assessment of damages on account of both infringements. There was no evidence that the Plaintiff would have charged any additional fee for the use of the front elevation graphic on a billboard. There was no evidence of any particular act of bad faith or conduct that would warrant a higher award of statutory damages over and above what is required to make the Plaintiff whole.

Punitive Damages:

[102] In addition to statutory damages, the Plaintiff seeks $20,000 in punitive damages.

[103] An election for statutory damages under s. 38.1(1) of the Copyright Act does not prohibit the award of punitive damages. See: Copyright Act, s. 38.1(7).

[104] Punitive damages are exceptional. They are generally awarded for malicious, oppressive and highhanded conduct.

[105] Punitive damages should only be awarded where all other damages have been considered and deemed inadequate to accomplish the objectives of retribution, deterrence and denunciation. See: Collett v. Northland Art Company Canada Inc., 2018 FC 269 at para. 71, citing Whiten v. Pilot Insurance Co., 2002 SCC 18 at para. 123.

[106] Considerations in the context of copyright infringement include:

a) Whether the conduct was planned and deliberate;

b) The intent and motive of the defendant;

c) Whether the defendant persisted in the outrageous conduct over a lengthy period of time;

d) Whether the defendant concealed or attempted to cover up its misconduct;

e) The defendant’s awareness that what he or she was doing was wrong; and

f) Whether the defendant profited from its misconduct.

See: Cinar Corporation v. Robinson, at para. 139 and Collett v. Northland Art Company Canada Inc., at para. 72, citing Microsoft Corp. v. Liu, 2016 FC 950.

[107] The Plaintiff argues that the conduct of the Defendants was planned and deliberate; they knew that Syncor was not the rightful owner of the copyright, yet they persisted in using the Plaintiff’s design, with DeMichele claiming the work was his. Gammond was alive to the issue of copyright, yet he took DeMichele at his word that he was the rightful owner and took no steps to confirm actual ownership by calling the Plaintiff. Gammond acknowledges having derived a profit from the project in an unknown amount.

[108] The Defendant argues that there is no evidence to support a finding of malicious, oppressive or highhanded conduct. I agree. While the Defendants’ conduct demonstrated a disregard for the Plaintiff’s copyright, there is no evidence to support a finding their actions were taken with malice, were oppressive or highhanded. Statutory damages combined with the declaratory and injunctive relief sought by the Plaintiff will be sufficient to properly address the breach of the Plaintiff’s rights.

Injunction:

[109] The Plaintiff seeks a permanent injunction preventing the Defendants from further using the Weiler Townhome or Nelson Townhome designs and drawings, and further, as against Syncor to prevent it from publicly displaying the billboard sign.

[110] There is a rebuttable presumption in favour of granting injunctive relief to a plaintiff that successfully establishes copyright. See: Rains v. Molea, 2013 ONSC 5016 at para. 97 and Copyright Act, s. 39. The injunctive relief sought is appropriate.

Delivery Up:

[111] There is also a rebuttable presumption that a plaintiff who successfully establishes copyright infringement is entitled to have the defendant deliver up all infringing works in the defendant’s possession. See: Rains v. Molea, at para. 98 and Copyright Act, s. 34.

[112] The Plaintiff seeks delivery up as against the Defendants of all copies of designs and construction drawings for the Weiler Townhome and Nelson Townhome projects, in addition to delivery up from Syncor of the billboard sign. I do not agree that this is necessary. With the award of statutory damages Syncor will have effectively paid for the use of the design for the Nelson Street project. The declaratory and injunctive relief should prevent further infringement of the Plaintiff’s rights.

Judgment:

[113] In light of the foregoing, judgment shall issue as follows:

a) For a declaration that:

(i) That copyright in the Weiler Townhome design and drawings subsists with the Plaintiff; and

(ii) That the Plaintiff’s copyright and moral rights have been infringed by the Defendants.

b) The Defendants shall pay to the Plaintiff the sum of $6,500 on account of statutory damages pursuant to s. 38.1(1) of the Copyright Act, with each Defendant responsible for one-half of this amount.

c) The Defendants are prohibited from using the Weiler Townhome or Nelson Townhome design in any other project without the express permission of the Plaintiff.

d) Pre-judgment and post-judgment interest shall be payable in accordance with the Courts of Justice Act, R.S.O. 1990, c.C.4. Pre-judgment interest shall commence effective December 8, 2015.

e) If the parties are unable to agree as to costs, submissions may be made in writing as follows:

i) The party claiming costs shall deliver their submissions, limited to five pages excluding case law and attachments no later than March 16, 2020;

ii) The responding party shall deliver their submissions, also limited to five pages within thirty days of receipt of the claiming party’s submissions; and

ii) Any reply submissions shall be delivered within fourteen days of receiving the responding submissions and shall be limited to two pages.

“Original signed by” The Honourable Madam Justice T.J. Nieckarz

Released: February 14, 2020