A-553-96

Tele-Direct (Publications) Inc. (Appellant) (Plaintiff)

v.

American Business Information, Inc. (Respondent) (Defendant)

Indexed as: Tele-Direct (Publications) Inc.v. American Business Information, Inc. (C.A.)

Court of Appeal, Denault J.A. (ex officio), Décary J.A. and Chevalier D.J."Montréal, October 6 and 7; Ottawa, October 27, 1997.

Copyright — Appeal from F.C.T.D. judgment holding no copyright in compilation of information in Yellow Pages as only minimal degree of skill, judgment, labour in organization of information — Copyright Act amended in 1993 to implement NAFTA — Definitions of artistic, dramatic, literary, musical works amended to include compilations thereof — Events herein occurring pre-, post-1993 amendments — (1) 1993 amendments not altering state of copyright law with respect to compilations of data — Selection, arrangement of data protected compilation only if end result original intellectual creation — (2) Where work sought to be protected by copyright compilation of data appearing within larger compilation of data, more correct to begin assessment of originality with fragment — Trial Judge looked at fragments of directory first because directory as whole not at issue — (3) For compilation to be original, must be work independently created by author, display at least minimal degree of skill, judgment and labour — Labour alone not determinative of originality — Sub-compilation neither new product of inventive labour nor intellectual creation within NAFTA Implementation Act, Art. 1705 — Compilation so obvious, commonplace not meriting copyright protection.

Construction of statutes — Copyright Act — Prior to 1993 amendments to Act, compilations protected only in so far as characterized as literary works — Compilations may now also be related to artistic, dramatic, musical works — Earlier cases to be applied with caution — Compilations not qualifying for copyright protection as literary work possibly qualifying under new legislation — As definition of —compilation— introduced to implement NAFTA, Art. 1705, where feasible, without departing from fundamental principles, Canadian courts interpreting provisions of Copyright Act tracking wording of American legislation should adopt interpretation satisfying both Anglo-Canadian wording of provision and American standards.

This was an appeal from the Trial Judge's finding that copyright did not exist in the compilation of information contained in Yellow Pages directories. It was conceded that the Yellow Pages, taken as a whole and given the visual aspects of the pages and their arrangement, are protected by copyright. The appellant claimed copyright in the organization of the subscriber information and in respect of the collection of additional data, such as facsimile numbers, trade-marks and number of years in operation. The Trial Judge concluded that the appellant exercised only a minimal degree of skill, judgment or labour in its overall arrangement which was insufficient to support a claim of originality in the compilation so as to warrant copyright protection.

Prior to the 1993 North American Free Trade Agreement Implementation Act, compilations were protected only in so far as they could be characterized as "literary works". In order to implement the North American Free Trade Agreement (NAFTA), the Copyright Act was substantially amended so that artistic, dramatic, literary and musical works included compilations thereof. The definition of "every original literary, dramatic, musical and artistic work" in section 2 was amended to include "compilations" as "a mode or form of its expression". Also, a definition of "compilation" was added to section 2 of the Copyright Act . The chain of events giving rise to the present claim both pre-dated and post-dated the amendments.

The issues were: (1) whether the amendment modified the state of the law; (2) what was the correct approach for assessing the originality of the compilation; and (3) whether the compilation involved a sufficient degree of skill, judgment or labour to qualify for copyright protection.

Held, the appeal should be dismissed.

The definition of "compilation" must be interpreted in relation to the context in which it was introduced i.e. to implement the North American Free Trade Agreement (NAFTA), Article 1705. What the parties to the Agreement wanted to protect were compilations of data that "embody original expression within the meaning of [the Berne] Convention" and that constitute "intellectual creations". The last two words indicate that compilations of data are to be measured by standards of intellect and creativity. As these standards were already present in Anglo-Canadian case law, the Canadian Government in signing the Agreement and the Canadian Parliament in adopting the 1993 amendments to the Copyright Act , must have expected the Court to follow the "creativity" school of cases rather than the "industrious collection" school.

The 1993 amendments did not alter the state of the law of copyright with respect to compilations of data. They reinforced in clear terms what the state of the law was, or ought to have been: the selection or arrangement of data results in a protected compilation only if the end result qualifies as an original intellectual creation.

As a result of the 1993 amendments, Canadian courts may seek more assistance from authoritative decisions of American courts when interpreting provisions of the Copyright Act that were amended or added to implement NAFTA, provided they proceed with caution. Where feasible, without departing from fundamental principles, Canadian courts should not hesitate to adopt an interpretation that satisfies both the Anglo-Canadian standards and the American standards where the wording of the provision tracks the wording of the American legislation.

statutes and regulations judicially considered

Convention for the Protection of Literary and Artistic Works, concluded at Berne on September 9, 1886, including the Paris Act of 1971.

Copyright Act, R.S.C., 1985, c. C-42, ss. 2 "artistic work" (as am. by S.C. 1993, c. 44, s. 53), "compilation" (as enacted idem ), "dramatic work" (as am. idem ), "every original literary, dramatic, musical and artistic work" (as am. idem ), "literary work" (as am. idem ), "musical work" (as am. idem ), 5(1) (as am. by S.C. 1994, c. 47, s. 57), 41 (as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 9).

Copyrights Act, 17 U.S.C. " 101 (1994).

Federal Court Rules, C.R.C., c. 663, R. 1208, Tariff B, Part II (as am. by SOR/95-282, s. 5).

North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, [1994] Can. T.S. No. 2, Art. 1705.

North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44.

cases judicially considered

applied:

Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 W.L.R. 273 (H.L.).

considered:

Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., 1984 CanLII 54 (BC SC), [1985] 1 W.W.R. 112; (1984), 3 C.P.R. (3d) 81 (B.C.S.C.); U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257; 97 F.T.R. 259 (F.C.T.D.); Sayre and Others v. Moore (1785), 1 East 316 n.5; 102 E.R. 139; Cramp (G.A.) & Sons, Ltd. v. Frank Smythson, Ltd., [1944] 2 All E.R. 92 (H.L.); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 111 S. Ct. 1282 (1991); BellSouth Advertising & Pub. Corp. v. Donnelley Information Pub., Inc., 999 F.2d 1436 (11th Cir. 1993); Key Publications Inc. v. Chinatown Today Publishing Enterprises Inc., 20 USPQ2d 1122 (2nd Cir. 1991).

referred to:

Moreau, Alfred v. St.Vincent, Roland, 1950 CanLII 248 (CA EXC), [1950] Ex. C.R. 198; [1950] 3 D.L.R. 713; (1950), 12 C.P.R. 32; 10 Fox Pat. C. 194; Compo Company Ltd. v. Blue Crest Music Inc. et al., 1979 CanLII 6 (SCC), [1980] 1 S.C.R. 357; (1979), 105 D.L.R. (3d) 249; 45 C.P.R. (2d) 1; 29 N.R. 296; Apple Computer, Inc. v. Mackintosh Computers Ltd., 1986 CanLII 6820 (FC), [1987] 1 F.C. 173; (1986), 28 D.L.R. (4th) 178; 8 C.I.P.R. 153; 10 C.P.R. (3d) 1; 3 F.T.R. 118 (T.D.); affd 1987 CanLII 9003 (FCA), [1988] 1 F.C. 673; (1987), 44 D.L.R. (4th) 74; 16 C.I.P.R. 15; 18 C.P.R. (3d) 129; 81 N.R. 3 (C.A.); affd sub nom. Apple Computer, Inc. v. Mackintosh Computers Ltd.; Apple Computer, Inc. v. 115778 Canada Inc., 1990 CanLII 119 (SCC), [1990] 2 S.C.R. 209; (1990), 71 D.L.R. (4th) 95; 30 C.P.R. (3d) 257; 110 N.R. 66.

authors cited

Siebrasse, N. "Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada" (1994), 11 Can. Intell. Prop. Rev . 191.

APPEAL from trial judgment (Tele-Direct (Publications) Inc. v. American Business Information Inc. (1996), 27 B.L.R. (2d) 1; 113 F.T.R. 123 (F.C.T.D.)) holding that copyright did not subsist in the compilation of information in the Yellow Pages. Appeal dismissed.

counsel:

Hugues G. Richard and L. Carrière for appellant.

Roger T. Hughes and John N. Allport for respondent.

solicitors:

Léger Robic Richard, s.e.n.c., Montréal, for appellant.

Sim, Hughes, Ashton & McKay, Toronto, for respondent.

The following are the reasons for judgment rendered in English by

Décary J.A.: The main issue in this appeal is whether copyright subsists in the compilation of information contained in Yellow Pages directories (the Yellow Pages) published by Tele-Direct (Publications) Inc. (the appellant), an affiliate of Bell Canada. American Business Information, Inc. (the respondent) has conceded that the Yellow Pages, when taken as a whole and given the visual aspects of the pages and their arrangement, enjoy the protection of copyright.

In essence, the appellant, who itself is conceding that it does not claim copyright in the subscriber information given to it by Bell Canada (the subscriber information consists of the heading description of the business and the name, address and telephone number of the business), claims copyright in respect of the organization of the subscriber information received in a disorganized state from Bell Canada and in respect of the collection of additional data such as facsimile numbers, trade-marks and number of years in operation which the appellant itself obtains from Bell Canada's customers.

Madam Justice McGillis (the Trial Judge) has found that copyright does not subsist in the compilation at issue. As her fairly extensive findings of facts are not questioned by the parties and as her reasons for judgment have already been reported¹ I shall not waste any time repeating what she has already so aptly described.

As a preliminary matter, the respondent has alleged that the action was barred by the three-year limitation period in section 41 of the Copyright Act² (the Act). The Trial Judge found, on the facts, that it was not and I see no reason to interfere with that finding.

On the main issue, the Trial Judge held that the principles to be applied in determining the extent to which copyright exists in a compilation are those outlined by McLachlin J. (as she then was) in Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., 1984 CanLII 54 (BC SC), [1985] 1 W.W.R. 112 (B.C.S.C.), at pages 115-116:

The defendants suggest that there is no copyright in the brochure because it used ideas and elements which are also found in the brochures of other competitors. That, however, does not defeat a claim for copyright. It is well established that compilations of material produced by others may be protected by copyright, provided that the arrangement of the elements taken from other sources is the product of the plaintiff's thought, selection and work. It is not the several components that are the subject of the copyright, but the overall arrangement of them which the plaintiff through his industry has produced. The basis of copyright is the originality of the work in question. So long as work, taste and discretion have entered into the composition, that originality is established. In the case of compilation, the originality requisite to copyright is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation: Ladbroke (Football), Ltd. v. William Hill (Football), Ltd., [1964] 1 All E.R. 465 (H.L.). Where copyright is claimed in a compilation it is not the correct approach to dissect the work in fragments and, if the fragments are not entitled to copyright, then deduce that the whole compilation is not so entitled; rather, the court should canvass the degree of industry, skill or judgment which has gone into the overall arrangement: Ladbroke, supra. See also T.J. Moore Co. Ltd. v. Accessoires du [sic] Bureau de Quebec Inc. (1973), 14 C.P.C. (2d) 113 (Fed. Ct. T.D.); Jarrold v. Houlston (1857), 3 K & J. 708, 69 E.R. 1294 (Ch.Div); MacMillan & Co., Ltd. v. Cooper (1923), 40 T.L.R. 186 (P.C.)

The proposition that arrangements of common ideas may be copyright is subject to certain limitations. First, it appears that the compiler can claim no copyright unless he or she had a right to use the materials constituting his compilation: T.J. Moore Co. Ltd. v. Accessoires de Bureau de Quebec Inc., supra, at p. 116. Secondly, in so far as component ideas may be in the public domain, they themselves may be copied with impunity, without breaching the compiler's copyright, which rests not in the components, but in the overall arrangement: Fox, Canadian Law of Copyright and Industrial Designs, 2nd ed. (1967), p. 118.³

The Trial Judge went on to conclude as follows:⁴

In conclusion, Tele-Direct arranged its information, the vast majority of which is not subject to copyright, according to accepted, commonplace standards of selection in the industry. In doing so, it exercised only a minimal degree of skill, judgment or labour in its overall arrangement which is insufficient to support a claim of originality in the compilation so as to warrant copyright protection. In my opinion, the defendant has successfully displaced the presumption in favour of copyright created by paragraph 34(3)(a) of the Act.

I find no error in that conclusion.

A word, first, on the applicable legislation. The question arises in this appeal because the Copyright Act was amended in 1993 to insert the definition of "compilation" in section 2 [as enacted by S.C. 1993, c. 44, s. 53]. As the chain of events that gave rise to the present claim span both the period preceding this amendment and the period following it, the Court has to ascertain whether the amendment modified the state of the law.

Compilations have been known to the Canadian law of copyright for ages, but it is only recently that they have been formally defined in the Act.

Prior to the 1993 North American Free Trade Agreement Implementation Act⁵ (NAFTA Implementation Act), compilations were only protected in so far as they could be characterized as "literary works".⁶

In order to implement the North American Free Trade Agreement [North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, [1994] Can. T.S. No. 2] (NAFTA), the Copyright Act was substantially amended. "Artistic work", "dramatic work", "literary work" and "musical work" were from now on to include, respectively, "compilations of artistic works", "any compilation of dramatic works", "compilations of literary works" and "any compilation [of any work of music or musical composition]" (subsection 53(2) of the NAFTA Implementation Act). In the same vein, the definition of "every original literary, dramatic, musical and artistic work" in section 2 was now including "compilations" as "a mode or form of its expression":

2. . . .

"every original literary, dramatic, musical and artistic work" includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, . . .

Furthermore, a definition of "compilation" was added to section 2 of the Copyright Act by subsection 53(3) of the NAFTA Implementation Act. It reads as follows:

2. . . .

"compilation" means

(a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or

(b) a work resulting from the selection or arrangement of data;

The 1993 amendments may not be without significance, even though they were down-played by counsel who considered them to be a mere codification of the existing law. Prior to these amendments, "compilations" were seen as "literary works" and courts had therefore to find a way to relate them to literary works. Since the amendments, "compilations" may be related to artistic, dramatic and musical works as well as to literary works, with the result that earlier cases which examined compilations of data as being part of literary works must now be applied with caution: it could be that compilations which did not qualify for copyright protection because they could not be related to literary works, would qualify under the new definition.

More importantly, the addition of the definition of "compilation" in so far as it relates to "a work resulting from the selection or arrangement of data" appears to me to have decided the battle which was shaping up in Canada between partisans of the "creativity" doctrine"according to which compilations must possess at least some minimal degree of creativity"and the partisans of the "industrious collection" or "sweat of the brow" doctrine"wherein copyright is a reward for the hard work that goes into compiling facts.

The definition of "compilation" must be interpreted in relation to the context in which it was introduced. Simply put, it was introduced as a result of the signature of the North American Free Trade Agreement and with the specific purpose of implementing it. It is therefore but natural when attempting to interpret the new definition to seek guidance in the very words of the relevant provision of NAFTA which the amendment intends to implement. The applicable provision is Article 1705 which reads as follows:

Article 1705: Copyright

1. Each Party shall protect the works covered by Article 2 of the Berne Convention, including any other works that embody original expression within the meaning of that Convention. In particular:

(a) all types of computer programs are literary works within the meaning of the Berne Convention and each Party shall protect them as such; and

(b) compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations, shall be protected as such.

The protection a Party provides under subparagraph (b) shall not extend to the data or material itself, or prejudice any copyright subsisting in that data or material.

Clearly, what the parties to the Agreement wanted to protect were compilations of data that "embody original expression within the meaning of [the Berne] Convention"⁷ and that constitute "intellectual creations". The use of these last two words is most revealing: compilations of data are to be measured by standards of intellect and creativity. As these standards were already present in Anglo-Canadian jurisprudence"as we shall see later"I can only assume that the Canadian government in signing the Agreement and the Canadian Parliament in adopting the 1993 amendments to the Copyright Act expected the Court to follow the "creativity" school of cases rather than the "industrious collection" school.

Whether compilations of data have been, through the amendments, protected "as such", as is stipulated by Article 1705(1)(b) of NAFTA, remains to be seen. If, at first blush, the fact that "compilations" is also defined as meaning "a work resulting from the selection or arrangement of data" appears to confer on compilations of data a status of their own, equal to that of literary, dramatic, musical or artistic works, yet the definition, when read in context, may not have that effect. Under subsection 5(1) [as am. by S.C. 1994, c. 47, s. 57] of the Act, copyright subsists not in a compilation of data per se , but in an original work, whether it be literary, dramatic, musical and artistic, with which presumably the type of data can best be related. Furthermore, the definition in section 2 of the words "every original literary, dramatic, musical and artistic work", which are the very words used in subsection 5(1), refers to compilations as being but "the mode or form" of expression of any of these four types of work. Whether, therefore, Canada has fully lived up to its commitments under Article 1705 of NAFTA is an open question which I need not resolve in order to decide this appeal.

All in all, apart from the possible qualifications one might wish to make with respect to some earlier decisions, I have come to the conclusion that the 1993 amendments did not alter the state of the law of copyright with respect to compilations of data. The amendments simply reinforce in clear terms what the state of the law was, or ought to have been: the selection or arrangement of data only results in a protected compilation if the end result qualifies as an original intellectual creation. I shall therefore, as have counsel and the Trial Judge, use the post-1993 amendments terminology as if it had applied throughout the years at issue in these proceedings.

Another impact of the 1993 amendments may well be that more assistance can henceforth be sought from authoritative decisions of the United States courts when interpreting these very provisions that were amended or added in the Copyright Act in order to implement NAFTA.⁸ I do not wish to be interpreted as saying that Canadian courts, when interpreting these provisions, should move away from following the Anglo-Canadian trend. I am only suggesting that where feasible without departing from fundamental principles, Canadian courts should not hesitate to adopt an interpretation that satisfies both the Anglo-Canadian standards and the American standards where, as here, it appears that the wording of Article 1705 of NAFTA and, by extension, of the added definition of "compilation" in the Canadian Copyright Act , tracks to a certain extent the wording of the definition of "compilation" found in the United States Copyrights Act .⁹ I note that contrary to what happened in Canada, the United States did not find it necessary in order to implement NAFTA to amend the definition of "compilation" which they already had in their legislation.

Returning now to the main issue in this appeal, the appellant's principal grounds of attack are the following: (a) the Trial Judge adopted an incorrect approach in assessing the originality of the compilation, and (b) she erred in finding that there was not a sufficient degree of skill, judgment or labour.

(a)  the correct approach

Counsel for the appellant has argued that the Trial Judge erred in assessing the originality of the compilation at issue by looking at its fragments rather than at its overall arrangement. According to counsel, the Trial Judge first asked herself whether the fragments allegedly copied could be by themselves the subject of copyright and failed to ask herself the only relevant question at that stage, i.e. whether the work as a whole was original.

The principles in that regard have been set out by Lord Reid in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.:¹⁰

The appellants' dissection theory is derived from some statements in infringement cases and I must, therefore, examine at this point the law regarding infringement. Copyright gives the exclusive right to do certain things including "reproducing the work in any material form" (section 2(5)), and reproduction includes reproduction of a substantial part of the work (section 49(1)). Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken. One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is "original" and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.

A wrong result can easily be reached if one begins by dissecting the plaintiffs' work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright.

I note, to start with, that Lord Reid did not qualify the suggested approach as the only correct one, but as the more correct approach. There may be cases where the more correct approach will not be suitable.

In the case at bar, the Trial Judge found herself in an unusual situation. The action had begun as a trade-mark infringement action. During the course of the proceedings, the appellant amended its statement of claim to include a copyright infringement claim. The trade-mark issues were settled by a consent judgment. The action proceeded to trial only on the copyright issues. And at trial, the respondent conceded that the appellant's Yellow Pages directories, taken as a whole, given the visual aspects of the pages and their arrangement, would have copyright.

Paragraph 5.3 of the amended statement of claim had claimed copyright in the Yellow Pages directories as "original works of compilation and original literary works of joint authorship protected under the Copyright Act".¹¹ Paragraph 14.7 had alleged infringement of "a substantial part of the Plaintiff's copyright compilation works, namely the classified listings of all Yellow Pages directories published in the provinces of Ontario and Quebec since 1989".¹² One of the remedies sought was a declaration "that copyright subsists in the YELLOW PAGES and PAGES JAUNES directories"¹³. And as a result of the concession made by the respondent, the appellant, in its memorandum of fact and law, recognized in paragraph 88 that "it is the compilation of in-column listings in which TELE-DIRECT claims to have protection under the Copyright Act".

The issue has therefore evolved from one of trade-mark, to one of copyright in directories as original works of compilation, to one of copyright in the compilation of in-column listings in these directories. The compilation at issue before the Trial Judge was no longer the directory as a whole, which I would describe as the main compilation, but fragments of that directory, i.e. the in-column listings, which fragments constituted what I would describe as a sub-compilation of their own.

In these circumstances, one can hardly blame the Trial Judge for having looked at the sub-compilation first, because the main compilation was no longer at issue. Indeed, the Trial Judge did follow the method suggested by Lord Reid: she examined the overall arrangement of the sub-compilation, rather than its fragments which were made up of data with respect to most of which the appellant was not seeking copyright protection.

It is counsel for the appellant himself who followed an improper approach. He argued that the Trial Judge having found at the outset that:¹⁴

. . . the Tele-Direct process which results in the "get-up" or overall arrangement of the "Yellow Pages" and "Pages Jaunes", in which the defendant admits the subsistence of copyright, is a sophisticated, tightly controlled, multi-layered system which is replete with deadlines, schedules and various means of ensuring the accuracy of the information and advertisements.

she could no longer find a lack of originality in the sub-compilation. Counsel might have lost sight of the fact that the issue had become, not whether copyright subsisted in the Yellow Pages directories (the main compilation), but whether it subsisted in the compilation of the information contained in those directories (the sub-compilation). Counsel having sought to establish copyright in a fragment of the main compilation, the Court could not but begin its analysis by analysing that very fragment. That approach is obviously the more correct approach where the work sought to be protected by copyright is a compilation of data which appears within a larger compilation of data.

(b)  the test of originality

Essentially, for a compilation of data to be original, it must be a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement. The threshold is low, but it does exist. If it were otherwise, all types of selections or arrangements would automatically qualify, for they all imply some degree of intellectual effort, and yet the Act is clear: only those works which are original are protected. There can therefore be compilations that do not meet the test. Counsel for the appellant has put a great, if not disproportionate emphasis on the amount of labour that went into the main compilation it has made, and has said little of the required labour, let alone the skill and judgment expanded in the development of the sub-compilation. His position is best described in paragraph 129 of his memorandum of fact and law:

129. . . . What the trial judge appears inadequately to assess is whether there was sufficient originality in the cumulative work of TELE-DIRECT in:

i) organizing the subscribers information received in a disorganized state from BELL CANADA;

ii) verifying BELL CANADA's determination of headings and, where necessary, making appropriate corrections;

iii) arranging for businesses to appear under more than one heading;

iv) collecting and adding to data supplied by BELL CANADA such information as facsimile numbers, trade-marks, years of establishing and any other information that ABI copies from the YELLOW PAGES directories of TELE-DIRECT whenever the information is available in these directories.

It is true that in many of the cases we have been referred to, the expression "skill, judgment or labour" has been used to describe the test to be met by a compilation in order to qualify as original and, therefore, to be worthy of copyright protection. It seems to me, however, that whenever "or" was used instead of "and", it was in a conjunctive rather than in a disjunctive way. It is doubtful that considerable labour combined with a negligible degree of skill and judgment will be sufficient in most situations to make a compilation of data original. One should always keep in mind that one of the purposes of the copyright legislation, historically, has been "to protect and reward the intellectual effort of the author (for a limited period of time) in the work" (my emphasis).¹⁵ The use of the word "copyright" in the English version of the Act has obscured the fact that what the Act fundamentally seeks to protect is "le droit d'auteur". While not defined in the Act, the word "author" conveys a sense of creativity and ingenuity. I do not read these cases which have adopted the "sweat of the brow" approach in matters of compilations of data as having asserted that the amount of labour would in itself be a determinative source of originality.¹⁶ If they did, I suggest that their approach was wrong and is irreconcilable with the standards of intellect and creativity that were expressly set out in NAFTA and endorsed in the 1993 amendments to the Copyright Act and that were already recognized in Anglo-Canadian law.

Cramp (G.A.) & Sons¹⁷ is a good illustration in the House of Lords of the indifferent use of the words "or" and "and" in the application of the "skill, judgment and/or labour test"; yet no one will argue that the proper test was that defined by Lord Porter:

It is conceded that, if the work, labour and skill required to make the selection and to compile the tables which form its items are negligible, then no copyright can subsist in it. Whether enough work, labour and skill is involved, and what its value is, must always be a question of degree.

As noted by Lord Macmillan in Cramp (G.A.) & Sons,¹⁸ "on questions of degree different minds may naturally reach different conclusions". McGillis J. found on the facts that there was not a sufficient degree of originality in the sub-compilation. I have reached the same conclusion.

Commenting [at page 192] on Lord Mansfield's statement in Sayre and Others v. Moore (1785), 1 East 316 n.5; 102 E.R. 139 [at page 140] to the effect that:

. . . we must take care to guard against two extremes equally prejudicial: the one, that men of ability, who have employed their time for the service of the community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded.

Professor Siebrasse¹⁹ observed that "intellectual property law must strike a balance between protecting the new products of inventive labour and allowing these to be freely available so as to form the basis for future progress". In the case at bar, it can hardly be said that the sub-compilation was a "new product of inventive labour" to use the learned professor's words or that it amounted to an "intellectual creation" within the meaning of Article 1705 of NAFTA. The compilation of the in-column listings is of such an obvious and commonplace character as to be unworthy of copyright protection. Certain compilations of routine data are so mechanical as to be devoid of a creative element.

I wish to say a few words, finally, on some recent American jurisprudence which counsel for the respondent has invoked, not as binding authorities but as useful guides, in support of his position. As I have noted before, it is permissible for Canadian courts to "find some assistance" in authoritative United States courts decisions in matters of copyright, provided that Canadian courts proceed "very carefully" in doing so. For reasons I have already explained, it could be useful in the instant case to have regard to the United States experience.

In Feist Publications, Inc. v. Rural Telephone Service Co., Inc.,²⁰ decided prior to the coming into force of NAFTA, the United States Supreme Court has found that names, towns and telephone numbers of subscribers in local white pages telephone directories were uncopyrightable facts and that these bits of information were not selected, coordinated, or arranged in an original way. In the course of her reasons, O'Connor J. stated the following, at page 1296:

As mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is equally true, however, that the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever. The standard of originality is low, but it does exist.

These words, in my view, could have been said in a Canadian context.

In BellSouth Advertising & Pub. Corp. v. Donnelley Information Pub., Inc.,²¹ the United States Court of Appeals, 11th Circuit, in a "rehearing en banc" in which seven of the eleven members of the Court participated, held, one member of the Court dissenting, that Donnelley had copied no original element of selection, coordination, or arrangement by copying the name, address, telephone number, business type, and unit of advertisement for each listing in Bell's directory. In that case, as in ours, the parties had stipulated that the directory, which was a typical yellow pages directory, qualified for compilation copyright protection. The dispute had focused on what elements of a classified directory constitute copyrightable compilations. The Court found that the acts of selection were not "acts of authorship, but techniques for the discovery of facts" (at page 1441) and held that (at page 1445):

Although the amount of material taken from the BAPCO directory was substantial in a purely quantitative sense, Donnelley did not, by this process, appropriate whatever original elements might arguably inhere in the BAPCO directory.

The facts in BellSouth, supra, are remarkably similar to the ones in the within appeal and I take comfort from the approach adopted by the Court of Appeals in its analysis of the concept of originality as applied to Yellow Pages telephone directories.

Counsel for the appellant responded by referring us to the decision of the Court of Appeals, 2nd Circuit in Key Publications Inc. v. Chinatown Today Publishing Enterprises Inc.²² which found copyright in the yellow pages of Key's Chinese Business Guide Directory. The Court did not apply a standard different from that applied in Feist²³ or in BellSouth.²⁴ It simply found on the evidence that Key's directory was copyrightable,²⁵ a point which is not at issue in this appeal since the respondent has conceded that the appellant's Yellow Pages directories were copyrightable. In Key Publications, the facts of the case indicated to the Court that there was evidence of "thought and creativity in the selection" process used by the compiler of the directory. As to the arrangement component of the analysis, the Court identified alphabetical, chronological and sequential listings of data as "mechanical groupings" lacking a minimum degree of originality. In the Court's opinion, however, the arrangement of data by Key Publications went beyond the mere mechanical grouping of data and "involved creativity". The Court went on to find that there was no infringement. This decision only goes to confirm that creativity must be present and that whether or not there is creativity is a question of degree.

At the end of the day, I come to the conclusion that there is a fortunate similarity in matters of compilation of data between the American approach and our own. I need not say more.

In view of my finding that no copyright can be claimed by the appellant, I do not find it necessary to examine the issue of infringement. I do not therefore endorse nor disapprove the observations and findings made in that regard by the Trial Judge.

I would therefore dismiss the appeal with costs.

Counsel for the appellant having filed a memorandum of fact and law of 108 pages (!) in clear violation of Rule 1208 [Federal Court Rules, C.R.C., c. 663], I would order the Taxing Officer to apply the maximum tariff authorized under Column V of Part II of Tariff B [as am. by SOR/95-282, s. 5] of the Rules with respect to item 19 (memorandum of fact and law) and item 22 (counsel fee on hearing of appeal).

Denault J.A. (ex officio): I concur.

Chevalier D.J.: I concur.

¹ Tele-Direct (Publications) Inc. v. American Business Information Inc. (1996), 27 B.L.R. (2d) 1 (F.C.T.D.).

² R.S.C., 1985, c. C-42, as amended up to, but not including S.C. 1997, c. 24, s. 41 (as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 9).

³ Supra, note 1, at p. 24.

⁴ Supra, note 1, at p. 26.

⁵ S.C. 1993, c. 44, assented to 23 June 1993.

⁶ See: Cramp (G.A.) & Sons, Ltd. v. Frank Smythson, Ltd., [1944] 2 All E.R. 92 (H.L.); U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.) and Moreau, Alfred v. St. Vincent, Roland, 1950 CanLII 248 (CA EXC), [1950] Ex. C.R. 198.

⁷ Under Art. 1701(2)(b) of NAFTA, the Convention for the Protection of Literary and Artistic Works (the Berne Convention) is that of 1971.

⁸ In a decision rendered before the United States signed the Berne Convention, Estey J. has observed that United States decisions "must be scrutinized very carefully because of some fundamental differences in copyright concepts which have been adopted in the legislation of that country" but he did not discourage Canadian courts from "find[ing] some assistance in examining the experience in the United States". (Compo Company Ltd v. Blue Crest Music Inc. et al. , 1979 CanLII 6 (SCC), [1980] 1 S.C.R. 357, at p. 367). I take these observations as referring only to authoritative decisions of the United States courts.

⁹ The definition of "compilation" is found in " 101 of the United States Copyrights Act , 17 U.S.C. (1994). It reads: "A `compilation' is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship."

¹⁰ [1964] 1 W.L.R. 273 (H.L.), at pp. 276-277.

¹¹ A.B., Vol. 1, at p. 19.

¹² A.B., Vol. 1, at p. 23.

¹³ A.B., Vol. 1, at p. 25.

¹⁴ Tele-Direct (Publications) Inc., supra, note 1, at pp. 22-23.

¹⁵ Reed J. in Apple Computer, Inc. v. Mackintosh Computers Ltd., 1986 CanLII 6820 (FC), [1987] 1 F.C. 173 (T.D.), at p. 200; affd 1987 CanLII 9003 (FCA), [1988] 1 F.C. 673 (C.A.) affd 1990 CanLII 119 (SCC), [1990] 2 S.C.R. 209.

¹⁶ For an analysis of the "sweat of the brow" approach see N. Siebrasse, "Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada" (1994), 11 Can. Intell. Prop. Rev. 191; for a recent application of that approach, see U & R Tax Services Ltd. v. H & R Block Canada Inc., supra, note 6, where Richard J. after having stated that "Industriousness ("sweat of the brow") as opposed to creativity is enough to give a work sufficient originality to make it copyrightable" (at p. 264), nevertheless went on to decide "based on the evidence before [him] . . . that the creation of the form involved labour, skill and judgment" (at p. 265).

¹⁷ Supra, note 6, at p. 97.

¹⁸ Ibid., at p. 96.

¹⁹ Supra, note 16, at p. 198.

²⁰ 111 S. Ct. 1282 (1991).

²¹ 999 F.2d 1436 (11th Cir. 1993).

²² 20 USPQ2d 1122 (2nd Cir. 1991).

²³ Supra, note 20.

²⁴ Supra, note 21.

²⁵ Supra, note 22, at pp. 1125-1126.