"Lesser artists borrow, great artists steal" - Igor Stravinsky (Guest Blog by Graham Honsa)

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.]

“Yes” to Common Sense and “No” to Unnecessary Experts

Leonardo's Mona Lisa is an acclaimed "masterpiece". But what about use of the term "masterpiece" in relation to retirement homes?

Is Masterpiece the Art of Living confusing with Masterpiece Living, when the marks are used by different entities in relation to same thing, namely retirement homes?   

A recent decision from the Supreme Court of Canada penned by Justice Rothstein has intrigued trade-marks lawyers who are asking to what extent it may change Canadian trade-marks law, for example by opening the door to the American “initial interest confusion” doctrine, which tolerates a degree of initial or temporary confusion that is eliminated before a purchase is made, and weakens the notion that consumers of expensive goods and services are less easily confused.

However, the more immediate impact of the decision may be apparent in procedural and evidentiary issues and even outside of trade-marks cases and may result in:

•    less work for “expert” witnesses
•    lower costs for litigants
•    a rediscovery of “common sense” in the court room and at “expert” tribunals.

There is long discussion about expert witness evidence that was unnecessary in this case and based upon wrong legal assumptions and may therefore have “diverted the trial judge from the correct legal test to apply when judging confusion”.  Justice Rothstein reminds us of the need to keep litigation costs down and that unnecessary expert evidence should not be admissible. He specially charges case management judges and prothonotaries to "assess the admissibility and usefulness of proposed expert and survey evidence at an early stage so as to avoid large expenditures of resources on evidence of little utility,"  

This is very important because parties with a big litigation budget have been known to intimidate and prevail over parties with a smaller budget through the use of unnecessary (never mind non-independent and even not properly "qualified") “expert” testimony that it may be risky not to counter.

Justice Rothstein reminds us that in a case such as this, where a correct confusion analysis does not require expert evidence about “morphology, semantics, rules of grammar and conventions of expression”, judges should just use their “common sense” and exclude such evidence if it is not needed.

He also reminds us other mandatory rules of evidence when it comes to “experts” as set forth by the Supreme Court in 1994 in R. v. Mohan. These rules apply to all cases.

I would imagine that some of my colleagues who practice before the Copyright Board and, indeed the Board itself, will find this decision to be of significant interest.

HK