Rains v Molea, 2013 ONSC 5016
Chiappetta J
Date of Judgment: 15 August 2013
The Ontario Superior Court recently released a
lengthy judgment in a curious case with a
predictable outcome.
Recently appointed Judge Victoria Chiappetta
dismissed the plaintiff’s claim after what must have been a very expensive
ten-day trial. She neatly summarised the case before her in her conclusion at
paragraph 99 of the decision:
This case involves two artists who had the same (and not unique) idea
to paint crumpled paper in a realistic way using conventional painting
techniques. Their motivations are different. Their processes are different.
Their resultant expressions are different. The Act protects each original Rains
painting and each original Molea painting from infringement. If any of Molea’s
17 comparison works were substantial copies or colourable imitations of Rains’
comparable images, Rains would be successful in his claim of copyright
infringement. However, simply because Rains expressed his idea before Molea and
found commercial success and critical acclaim for doing so, does not mean that
Molea or any other painter is forever prohibited from independently creating an
expression of crumpled paper in still life form. In my view, to give Rains
exclusive access to this territory would unfairly silence independent
expressions of the idea and render absurd the very purpose of the Act.
Since 1991, Malcom Rains painted around 200 still
life depictions of crumpled paper in his ‘Classical Series’. Molea,
who immigrated to Canada in 1999, began making similar paintings in 2000. At
trial, he admitted to having seen some of Rains’ paintings but he was able to
establish that he independently produced his impugned works.
This case won’t break any new legal ground—this is
another instance where a plaintiff tries to convince a court that copyright law
should protect his idea. What makes this case interesting, however, is how far
Rains was able to take his argument. I said this case had a predictable ending,
but others apparently disagreed; the gallery where Molea’s works were displayed
settled with Rains for an undisclosed sum,
and Rains told the Court he succeeded in preventing another artist “from
continuing to paint realistic images of crumpled paper” (at para 37).
It seems Rains got where he did because the large
amounts of evidence and expert testimony from both sides obscured the
relatively straightforward issues in this case. The prime example of this lies
in Rains’ assertion, and the Court’s discussion, of protection underlying the
compilation as a whole. The basis for the assertion was the expert testimony
from the art critic Wilkin, who stated that Rains’ work had a certain ‘gestalt’,
or “qualities that are difficult to articulate but that you recognize when you
look at art” (at para 19). Wilkin defined the ‘gestalt’ of Rains’ series as
clear and crisply rendered with a high sense of illusionism and indeterminate
sense of space.
How the concept of ‘gestalt’ related to copyright
law was unclear, but apparently Rains submitted that his works possessed a
“feeling or evocation” that rendered the ‘Classical Series’ a compilation (at
para 18). The Copyright Act only
protects a compilation if the compilation itself meets the test for
originality—yet there was no indication in this case that ‘gestalt’ could
assist the Court in determining whether the ‘Classical Series’ met that test.
If ‘gestalt’ was a stand-in for “qualities that are difficult to articulate but
that you recognize when you look at art”, it was neither relevant nor necessary.
Unfortunately, Judge Chiappetta did not reject outright
Wilkin’s proposition as irrelevant to the issue of whether the series
constituted a compilation deserving protection. Instead, she deferred to Molea’s
expert, Kisick, who discredited Wilkin’s proposition from an art criticism
perspective.
Judge Chiappetta should have emphatically rejected
Wilkins’ testimony on ‘gestalt’ as a message to future litigants to tighten the
scope of expert testimony. This could have been an opportunity to apply to the
copyright context Justice Rothstein’s lesson from trade-marks law. The evidence
was irrelevant and distracting and sought to replace an expert’s opinion for
the trial judge’s in a situation where this was unnecessary, exactly what the
Supreme Court warned against in Masterpiece v
Alavida Lifestyles, 2011 SCC 27.
As Justice Rothstein stated: “What is required is that the opinion be necessary
in the sense that it provide information “which is likely to be outside the
experience and knowledge of a judge or jury”” (at para 75). He worried that
some expert testimony could complicate court proceedings and lead to more
costly proceedings.
In this case, the trial judge was as capable as
Wilkin of assessing the qualities that she recognised when she viewed Rains’
collection. It is unlikely, however, that she would have done so, because that
would not have informed the analysis. In contrast, when Molea’s expert, Kisick,
provided evidence that depictions of crumpled paper have been taught since at
least the eighteenth century, his testimony contributed to the issues of the
case in a way that the trial judge would have been unqualified to do.
Graham Honsa
[HPK – Graham Honsa has just completed his articles
at Macera & Jarzyna, LLP in Ottawa, where I am Counsel. I thank him for all
of his good work and for bringing this interesting recent decision to my
attention and taking the time to write about it. His views are his own and do not represent
those of the firm or any of its clients. I am happy to publish guest blogs by
anyone, especially students or young lawyers, as long as the blogs are – like this
one - carefully researched, well-written, of interest to this readership – and last
but not least, in good taste and high quality.]
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