Hunter v. British Columbia Lottery Corporation

2018 BCSC 816 Hunter v. British Columbia Lottery Corporation

IN THE SUPREME COURT OF BRITISH COLUMBIA Citation: Hunter v. British Columbia Lottery Corporation, 2018 BCSC 816 Date: 20180423 Docket: S181192 Registry: Vancouver Between: Kim Hunter Plaintiff And British Columbia Lottery Corporation Defendant Before: The Honourable Mr. Justice Williams Oral Reasons for Judgment In Chambers Counsel for the Plaintiff: J. Romanoski Counsel for the Defendant: D. Wotherspoon R. Mittal Place and Date of Trial/Hearing: Vancouver, B.C. April 16, 2018 Place and Date of Judgment: Vancouver, B.C. April 23, 2018 [1] THE COURT: Counsel, I am just going to deliver reasons orally. In the event a transcript is required or requested, I will reserve the right to make minor editorial corrections, but I will not in any way change the substance of the ruling. Introduction [2] The plaintiff brings this application seeking a declaration that an item of artistic commercial design that she created, the "Leaf Image", is an original work as contemplated in the Copyright Act, R.S.C. 1985, c. C-42, and relevant jurisprudence, and is thus protected by copyright with such copyright being owned by the plaintiff. She seeks to have this order made by way of summary judgment pursuant to R. 9-6 of the Supreme Court Civil Rules. [3] The defendant opposes the application. Background [4] The plaintiff is a contemporary artist and commercial graphic designer. In her affidavit

testimony, she states that in October 2005 she found a red maple leaf, which I will refer to as the "Real Leaf." She was struck by the beauty of its natural features and decided to produce a graphic design by replicating the Real Leaf. In her affidavit, she describes having spent a considerable amount of time preserving it by pressing and drying the leaf, then scanning it into her computer, after which she used Photoshop tools to adjust and enhance the image including removing some flaws, adding colour, and adjusting the shape. The resultant work was the Leaf Image. Once complete, she uploaded the image to certain products which were to be sold as souvenirs. Those were offered for sale on commercial point of sale platforms. [5] The plaintiff takes the position that she retained full ownership of the intellectual property rights including copyright and moral rights in the Leaf Image. In 2017, she applied to register the Leaf Image for copyright protection in the U.S.A. and, in September 2017, she was granted a certificate of registration by the Copyright Office. The plaintiff says that she ensures her contact information is available in proximity to images on souvenirs in an effort to retain control of the use of the Leaf Image. As well, she uses an Internet search mechanism to detect and monitor use of the Leaf Image to protect what she says is a unique and valuable graphic

design that she expended considerable effort to create. [6] In late 2016, the defendant, British Columbia Lottery Corporation, wished to market a scratch-and-win lottery ticket in conjunction with Canada's 150th birthday. The defendant engaged a Winnipeg-based graphic design company, Pollard Banknote Limited, to design a ticket incorporating what it considered to be an iconic symbol of Canada, a maple leaf. Pollard complied and designed and created the Canada 150 Ticket, featuring quite prominently a maple leaf which Pollard says it designed and created through a computer program called Adobe Illustrator. I will refer to that as "the Pollard Leaf." Copyright on the Canada 150 Ticket was assigned to British Columbia Lottery Corporation by Pollard. [7] On January 18, 2018, the plaintiff filed a claim against the British Columbia Lottery Corporation alleging copyright infringement. She says the Pollard Leaf is an identical reproduction of her Leaf Image or, alternatively, nearly identical or substantially the same. Positions of the Parties [8] The plaintiff says that the Leaf Image is an original work of art that she created using a great deal of time, skill, and judgment. It is, she says, more than a mere copy of a maple leaf. [9] With respect to the issue of pursuing this remedy by way of summary judgment, the plaintiff submits that this issue is appropriate for determination by

way of summary judgment because it is not a genuine issue for a trial and the Court can determine the issue by applying the material facts provided by way of affidavit evidence to the sufficiently clear applicable law. Furthermore, she submits that the defendant lottery corporation is bound to fail in denying copyright exists in the Leaf Image based on the facts she has provided and as a matter of law. She says the law relating to the existence of copyright in a work is well established in Canada and that the defined standard of originality based on skill and judgment used by an author is a straightforward matter. She says she has met and exceeded the standard of skill and judgment required to designate the Leaf Image as an original work that is protected by copyright. [10] The defendant disputes the proposition that this is a matter which is suitable for adjudication under the summary judgment rule. In the defendant's submission, the authorities have determined that this means it must be plain and obvious or beyond a doubt that no genuine issue exists for trial. That is, if there is a bona fide triable issue, summary judgment will not be granted. In this case, says the defendant, there are material conflicts in the evidence. Furthermore, the defendant says the court will only grant summary judgment where the only genuine issue to be decided is a question of law. However, in

the present matter, it is the contention of the defendant that the legal issue is a novel point of law. The defendant points out that this action was only commenced less than four months ago and the discovery procedures have not been completed. [11] More generally, it is the position of the defendant that the underlying issue here is technical and complicated. Specifically, the matter of whether the image at issue is an original work or merely a copy of an item appearing in nature is very much alive. It is also an issue as to whether the creation of the image through the use of electronic editing tools meaningfully informs the determination of whether the image is an original work. Finally, the defendant says that issues of credibility are present because the plaintiff's evidence as to the length of time it took her to create the work at issue is substantially in dispute as compared to the evidence which the defendant has tendered, that is, the testimony of Mr. Van De Walle, the manager of Creative Services for Pollard Banknote Limited. His affidavit has been filed on this application. Discussion [12] I am going to address first the matter of legal principles with respect to the suitability of a matter for summary judgment. A great deal of judicial time and effort has been expended discussing and answering this question on a great many occasions. A relatively recent and

succinct statement of the criteria to be applied is contained in the judgment of Justice Dley in Watson Island Development Corp. v. Prince Rupert (City), 2015 BCSC 1474: [21] Rule 9-6(5)(a) permits a court to dismiss a claim if it is satisfied that there is no genuine issue for trial . Summary judgment may be granted on all or part of a claim. The onus is on the applicant to prove beyond a reasonable doubt that there is no triable issue Another way of stating the test is whether the plaintiff is "bound to lose" [22] The application under Rule 9-6 is based on the premise that the claim is factually without merit. It raises an issue of fact only or, at best, a question of mixed fact and law, unless the court determines under subrule (5)(c) that "the only genuine issue is an issue of law", in which case the court "may determine the question and pronounce judgment accordingly" [23] On an application under Rule 9-6 the court is not to weigh the evidence. If the evidence needs to be weighed and assessed, then the test of "plain and obvious" or "beyond a doubt" has not been satisfied and the application is to be dismissed [24] An application to dismiss a claim that is bound to be unsuccessful weeds out unmeritorious claims and saves the heavy price of time and cost borne by the parties and the justice system [25] Caution must be exercised in granting summary judgment on only a portion

of a claim so as to guard against litigating in slices Judgment on only a portion of the claim risks multiple appeals being heard within the same action, findings being made in the absence of a full factual context, and inconsistent findings being made after further evidence has been adduced [26] On the other hand, the resolution of an important part of the claim against a party may significantly impact the balance of the claim and provide for a timelier and cost effective approach Discussion [13] On this application, the parties have articulated the question as whether the Leaf Image is subject to copyright. With respect, it seems to me that may be stating the issue in a way that somewhat overstates its simplicity given that the surrounding circumstances must be given a reasonable measure of consideration. For example, there is the question of whether the Pollard Leaf is an identical reproduction of the Leaf Image or nearly identical, substantially the same. On the pleadings, implicitly at least, the defendant disputes that the Pollard Leaf is a copy or reproduction of the Leaf Image in that the defendant asserts that Pollard designed and created the Pollard Leaf. That dispute, considered in the factual context that maple leaf images are numerous and nearly ubiquitous in Canadian culture, to my mind, makes the copyright claim less straightforward. As regards the application of

the Supreme Court of Canada's definition of an original work within the meaning of the Copyright Act in C.C.H. Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 at para. 16, I am not convinced that, once the Court takes into account the disputed discrepancy between the evidence of the plaintiff and that of Mr. Van De Walle, together with the question of the significance of the use of electronic tools to produce the image, the outcome will be that the Leaf Image is subject to copyright. A full and proper determination of the issue may well entail the adducing and consideration of further evidence. It is relevant and telling, as well, that counsel have not been able to provide the Court with any decision which would appear to deal with the issue that this case raises. [14] In my view, there are contentious issues for determination here. I am not convinced that the necessary findings of fact can be made from the evidence as it is in the record before this Court. [15] In the result, I find myself unable to conclude on the pleadings, the evidence, the authorities to which I have been referred and the submissions of counsel that the defendant is bound to lose or that there is no bona fide issue for trial. I am not satisfied that adjudication by summary judgment is appropriate and, accordingly, I conclude that this application must stand dismissed. [16] MR. ROMANOSKI: Thank you, My Lord. Costs in the cause? [17] THE COURT: Costs in the cause. "J. Williams J."