T-4572-78
The Bulman Group Limited (Plaintiff)
v.
"One Write" Accounting Systems Ltd. (Defend-
ant)
Trial Division, Collier J.—Toronto, January 19,
20, 21 and 22, 1982.
Copyright — Literary work — Action for copyright
infringement of business forms involving a one-write system —
Forms have headings, sub-headings and places for entries of
figures — Defendant alleges that the forms have no aesthetic
or informative value — Whether the forms have the character
istic of "literary" — Whether copyright subsists in the forms
— Action allowed — Copyright Act, R.S.C. 1970, c. C-30, ss.
2, 4(1), 22.
The plaintiff sues for copyright infringement of nine business
forms for use in the keeping of books of account. The forms are
part of a one-write system, the purpose being to avoid the
necessity of repeating entries for book-keeping and accounting
purposes. The forms have various headings and sub-headings
and spaces indicated for entries of figures. The defendant
admits having deliberately copied the nine forms in issue. If
copyright exists, infringement is conceded. The defendant also
admits that the plaintiff's forms were "original". However, the
defendant contends that the forms do not have the characteris
tic of "literary" and therefore copyright cannot subsist in them.
The forms allegedly have no aesthetic or informative value. The
issue is whether copyright can subsist in these forms.
Held, the action is allowed. There is little doubt that the
forms can be classified as compilations. There is no indication
in the case law that for a compilation to qualify as a literary
work, the imparting of intelligible information is a fundamental
requirement. "Literary" is used in the statute in the sense of
written or printed matter, and not in some dictionary sense of
imparting ideas, information or knowledge. Nevertheless, a
mere printing or writing is not sufficient. For copyright to
subsist, there must be, in a compilation of the commercial type
here, a literary sense of functionally assisting, guiding or
pointing the way to some end. These forms accomplish that.
Even if the imparting of information of some kind is necessary
to bring a compilation into the ambit of a "literary work", then
that has been done. The various headings on the forms convey
information to the user as to what he ought to record, where he
ought to record it, and the manner, in many instances, in which
it ought to be recorded.
University of London Press, Ltd. v. University Tutorial
Press, Ltd. [1916] 2 Ch. 601, applied. Kalamazoo Division
(Pty) Ltd. v. Gay [1978] 2 S.A.L.R. 184, agreed with.
Bulman Group Ltd. v. Alpha One-Write Systems B.C.
Ltd. (1980) 54 C.P.R. (2d) 171, reversed, (1981) 54
C.P.R. (2d) 179, considered. Real Estate Institute of
N.S.W. v. Wood (1923) 23 S.R.N.S.W. 349, considered.
G. A. Cramp & Sons, Ltd. v. Frank Smythson, Ltd.
[1944] 2 All E.R. 92, referred to. Ascot Jockey Club Ltd.
v. Simons (1968) 64 W.W.R. 411, referred to. William
Hill (Football) Ltd. v. Ladbroke (Football) Ltd. [ 1980]
R.P.C. 539 (C.A.), [1964] 1 All E.R. 465 (H.L.), referred
to.
ACTION.
COUNSEL:
I. Goldsmith, Q.C. for plaintiff.
D. W. Buchanan for defendant.
SOLICITORS:
I. Goldsmith, Q.C., Toronto, for plaintiff.
Clark, Wilson & Company, Vancouver, for
defendant.
The following are the reasons for judgment
rendered in English by
COLLIER J.: The plaintiff sues for copyright
infringement in respect of nine business forms. The
forms have identifying numbers. They are set out
in Schedule A to the statement of claim. The
forms are for use in the keeping of books of
account in businesses, particularly in what was
called "One Write" systems. The forms are
designed in such a way that when combined with
related forms and carbons, records are created in
one writing, rather than in two or three separate,
basically repetitive writings, in various books.
Addy J., in The Bulman Group Ltd. v. Alpha
One-Write Systems B.C. Ltd. (1980) 54 C.P.R.
(2d) 171, described generally the forms, and their
use, as follows, at pages 174-175:
The accounting forms in issue, to which the copyright refers,
are basically part of what is termed a "one-write" system, the
purpose being to avoid the necessity of repeating entries for
bookkeeping and accounting purposes in various books of
account and other financial documents required by a business.
Several forms of different colours to facilitate recognition, with
coinciding vertical and horizontal lines forming rectangular
spaces for entries of figures, are fixed together temporarily on a
board with small pegs which protrude through holes in the
forms to keep the columns and lines perfectly aligned. When an
entry is made on the top form, the same entry is automatically
transferred by carbon imprint on the other forms underneath,
thus, obviating the repetition of entries by other manual or
mechanical means. Each form can then be removed and placed
in its proper binder or sent out to third parties as the case may
be. For instance, the first series of four forms in issue are part
of a pay-roll system. The first form is an "earnings record
card" for each employee, the second is a "payroll journal
sheet," the third is a "pay-advice sheet" and the fourth is a
"salary cheque form" attached to a stub containing the break
down of earnings, various deductions, benefits, non-taxable
allowances, etc. All of these four forms contain in a vertical
column the same headings or sub-headings such as "earnings",
"regular and overtime", "gross earnings", "paid benefits",
"deductions": "U.I.C.", "income tax", "Canada pension" etc.
In other words, all the required headings to break down and
show in detail all of the particulars of an employee's earnings
and benefits, the disposition which has been made of same and
also whether they are taxable or non-taxable are shown and
transferred by the one entry on the top one of the four forms.
The other three forms in issue are part of two different systems,
one being a "cheque-writing system" which includes blank
cheque forms and the other an "accounts-payable system".
Basically, the idea is the same, although there is much less
writing on the forms of these two last-mentioned categories.
For instance, the "accounts-payable form" pertaining to the
"accounts-payable system" merely has seven columns with the
words "date", "detail", "reference", "discount", "debit",
"credit" and "balance" along an horizontal line with vertical
columns under each of the headings. At the top of the page are
the words "name and address", "account number" and "sheet
number".
I am content to adopt, as my own, that general
description of the forms in issue in this suit. There
were a number of additional features and headings
referred to in evidence. For example, what was
called the box for "proof" of Unemployment In
surance deductions and contributions, and what
was termed the "quick add" feature. I do not think
it necessary to elaborate here on those additional
matters.
The defendant admits having deliberately copied
the nine forms in issue. If copyright exists,
infringement is conceded.
The essential dispute is whether copyright can
subsist in these forms. Counsel for the defendant
put his position this way: the forms are not capable
of copyright.
The relevant portion of section 4 of the Copy
right Act, R.S.C. 1970, c. C-30 is as follows:
4. (1) ... copyright shall subsist ... in every original liter
ary, dramatic, musical and artistic work ....
The following definitions from section 2 of the
statute are relevant:
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 books, pamphlets, and other writings,
lectures, dramatic or dramatico-musical works, musical
works or compositions with or without words, illustrations,
sketches, and plastic works relative to geography, topogra
phy, architecture or science;
"literary works" includes maps, charts, plans, tables, and
compilations;
Mr. Buchanan, for the defendant, frankly
conceded the plaintiff's forms met the test
embraced by the word "original". They were
created by the plaintiff's employees, were not mere
copies of other forms, and enough judgment, skill
and labour had been bestowed on them to steer
them from the fate of the diaries, directed by the
House of Lords, in G. A. Cramp & Sons, Ltd. v.
Frank Smythson, Ltd. [1944] 2 All E.R. 92.
I think there is little doubt the forms can be
classified as compilations. But the defendant con
tends they do not have the characteristic of "liter-
ary". Therefore copyright cannot subsist in them.
For them to be protected, compilations must, it is
said, have some literary information. Here, the
argument runs, these forms have no aesthetic or
informative value, or, at best, have insufficient
informative value.
A similar argument found favour with Addy J.
in the Alpha case. But the correctness of that
decision is, in my view, open to question because of
some of the remarks made by Le Dain J. when the
refusal of the interlocutory injunction was reversed
on appeal ((1981) 54 C.P.R. (2d) 179).
Reliance was placed by the defendant on some
comments of Street C.J., in Real Estate Institute
of N.S.W. v. Wood (1923) 23 S.R.N.S.W. 349 at
pages 351-352:
The plaintiff company claims to be the owner of the copyright
in a form of contract embodying conditions and terms of the
sale of land in N.S.W., and it complains that the defendant,
without its authority, has printed and published a form of
contract which infringes its copyright. The matter comes before
the Court at this stage on a motion for an interlocutory
injunction, and objection is taken by way of demurrer that a
document of this kind cannot be the subject of copyright. I do
not agree. The originality of the compilation must be taken to
be admitted for the purpose of this application, and I do not
think that it can be successfully contended that it is not a
literary work within the meaning of the Imperial Copyright Act
1911, which is adopted by the Commonwealth Copyright Act
1912. It is not necessary that a literary work, within the
meaning of the Act, should be possessed of literary merit. It is
well known that compilations of various kinds, which cannot
claim to rank as literature, are covered by the law of copyright,
if they supply intelligible information and if mental effort and
industry are required for their preparation. The copyright laws
are designed to protect the expression of ideas. This was
pointed out very clearly in Hollinrake v. Truswell ([1894] 3
Ch. 420). Lord Herschell, L.C., said (at p. 424):—"The object
of the Copyright Act was to prevent anyone publishing a copy
of the particular form of expression in which an author con
veyed ideas or information to the world"; and Lindley, L.J.,
said (at p. 427):—"Copyright, however, does not extend to
ideas, or schemes, or systems, or methods; it is confined to their
expression; and if their expression is not copied the copyright is
not infringed."
That case was indirectly referred to by Mac-
donald J., then of the British Columbia Supreme
Court, in Ascot Jockey Club Limited v. Simons
(1968) 64 W.W.R. 411, in dealing with a quite
different factual situation.
The well-known, and often quoted, passage from
the judgment of Peterson J., in University of
London Press, Ltd. v. University Tutorial Press,
Ltd. [1916] 2 Ch. 601 at page 608, sets out the
general meaning to be given to "literary work":
The first question that is raised is, Are these examination
papers subject of copyright? Sect. 1, sub-s. 1, of the Copyright
Act of 1911 provides for copyright in "every original literary
dramatic musical and artistic work," subject to certain condi
tions which for this purpose are immaterial, and the question is,
therefore, whether these examination papers are, within the
meaning of this Act, original literary works. Although a liter
ary work is not defined in the Act, s. 35 states what the phrase
includes; the definition is not a completely comprehensive one,
but the section is intended to show what, amongst other things,
is included in the description "literary work," and the words are
" `Literary work' includes maps, charts, plans, tables, and
compilations." It may be difficult to define "literary work" as
used in this Act, but it seems to be plain that it is not confined
to "literary work" in the sense in which that phrase is applied,
for instance, to Meredith's novels and the writings of Robert
Louis Stevenson. In speaking of such writings as literary works,
one thinks of the quality, the style, and the literary finish which
they exhibit. Under the Act of 1842, which protected "books,"
many things which had no pretensions to literary style acquired
copyright; for example, a list of registered bills of sale, a list of
foxhounds and hunting days, and trade catalogues; and I see no
ground for coming to the conclusion that the present Act was
intended to curtail the rights of authors. In my view the words
"literary work" cover work which is expressed in print or
writing, irrespective of the question whether the quality or style
is high. The word "literary" seems to be used in a sense
somewhat similar to the use of the word "literature" in political
or electioneering literature and refers to written or printed
matter. Papers set by examiners are, in my opinion, "literary
work" within the meaning of the present Act.
In that case the "works" were examination
papers in mathematics. There is no indication in
that case, or in any other English case cited to me,
that for a compilation to qualify as a literary work,
the imparting of intelligible information is a fun
damental requirement. One finds no such sugges
tion or argument in, for example, the reasons and
speeches given in the football coupons case: Wil-
liam Hill (Football) Ltd. v. Ladbroke (Football)
Ltd. [1980] R.P.C. 539 (C.A.) and [1964] 1 All
E.R. 465 (H.L.).
I prefer the view of Peterson J., that "literary"
is used in the statute in the sense of written or
printed matter, and not in some dictionary sense of
imparting ideas, information or knowledge. But,
nevertheless, a mere printing or writing is not
sufficient. For copyright to subsist, there must be,
in a compilation of the commercial type here, a
literary sense of functionally assisting, guiding, or
pointing the way to some end.
These forms, to my mind, accomplish that.
Even if the imparting of information of some
kind is necessary to bring a compilation into the
ambit of a "literary work" then, in my view, that
has been done here. The various headings on these
forms convey information to the user as to what he
ought to record, where he ought to record it, and
the manner, in many instances, in which it ought
to be recorded.
The South African case, Kalamazoo Division
(Pty) Ltd. v. Gay [1978] 2 S.A.L.R. 184, was cited
to me. The business forms there seem quite similar
to some of those in issue here. The only question
was whether copyright subsisted in the forms. If it
did, infringement was conceded.
Mr. Buchanan frankly stated that, to give effect
to his contention, I would likely have to distinguish
the Kalamazoo case, disregard it, or consider it
wrongly decided.
The Kalamazoo case, in my view, is correct in
law. I follow it in finding for the plaintiff in this
case. I refer to the following passages:
At pages 188-189:
The question for decision in this case is whether copyright
subsists in the applicant's forms. Mr Ipp, on behalf of the
respondent, conceded that, if such copyright subsists, then it
has been infringed. He advanced two main grounds, however, in
support of the argument that the documents in question were
not susceptible of copyright. In the first place he submitted that
where documents form an integral part of a system they are not
capable of copyright. Reliance for this proposition was placed
on Hollinrake y Truswell (1894) 3 Ch 420. In that case the
plaintiff claimed copyright in a cardboard pattern sleeve con
taining upon it scales, figures and descriptive words for adapt
ing it to sleeves of any dimensions. It was held that it was not
capable of copyright as a "map, chart, or plan" within the
meaning of the Copyright Act then in force in England. I do
not consider that Hollinrake's case is of assistance in the
present matter. The facts there were entirely different. The
so-called sleeve chart in respect of which copyright protection
was sought was held to be in truth a measuring instrument, like
a scaled ruler. It consisted of a piece of cardboard, so curved as
to represent the parts of the arm above and below the elbow,
with the following words printed on it: "Top curve line; under
curve line; under arm curves; measure round the thick part of
the arm; measure round the thick part of the elbow; measure
round the knuckles of the hand." Lord HERSCHELL LC pointed
out that the words and figures on the chart do not in combina
tion convey any intelligible idea, nor could they be of the
slightest use to anyone, apart from the cardboard upon which
they were printed.
"They are not merely directions for the use of the card
board, which is in truth a measuring apparatus, but they are
a part of that very apparatus itself, without which it cannot
be used, and except in connection with which they are
absolutely useless."
LINDLEY LJ said:
"The character of what is published is the test of copy
right. If what is published is not separately published, is not a
publication complete in itself, but is only a direction on a tool
or machine, to be understood and used with it, such direction
cannot, in my opinion, be severed from the tool or machine of
which it is really part, and cannot be monopolized by its
inventor under the Copyright Act."
The following description of the object which the Court had
before it in Hollinrake's case was given by DAVEY LJ:
"The sleeve chart before us gives no information or
instruction ... It is a representation of the shape of a lady's
arm, or more probably of a sleeve designed for a lady's arm,
with certain scales for measurement upon it. It is intended,
not for the purpose of giving information or pleasure, but for
practical use in the art of dressmaking. It is, in fact, a
mechanical contrivance, appliance or tool, for the better
enabling a dressmaker to make her measurements for the
purpose of cutting out the sleeve of a lady's dress, and is
intended to be used for that purpose."
It will be seen that in the Hollinrake case the Court had to deal
with a situation entirely different from the one presently before
me. Here the applicant's forms are not printed on any instru
ment, apparatus, mechanical contrivance or tool, of which they
are part and parcel or of which they form an integral, indivis
ible part. Nor can it be said that the forms do not convey any
intelligible idea or that they cannot be of the slightest use to
anyone, apart from an instrument to which they belong. They
are publications complete in themselves and not only directions
on a tool or machine from which they cannot be severed. In the
circumstances and on the facts of this case I do not think that
the Hollinrake case can be used as authority for the proposition
that no copyright can subsist in respect of the applicant's forms.
I also do not agree with the suggestion by counsel for the
respondents that what applicant is in effect claiming in this
case is copyright in a system.
And at page 191:
Mr Ipp argued that whatever labour or judgment was
involved in connection with the production of the applicant's
forms was expended not on the compilation of the forms as
such but rather on the development and proper functioning of
an office system in connection with which the forms are used. I
do not agree. It seems to me that the amount of labour, skill
and judgment bestowed by Mr Barr on the compilation of the
forms themselves is sufficiently substantial to attract copyright.
In any event I do not consider that the fact that the forms were
designed and intended for use in an office system such as that
described by Mr Barr means that they can no longer be
regarded as proper subject-matter for copyright. In developing
his argument Mr Ipp contended, if I understood him correctly,
that the skill, labour and ingenuity expended by Mr Barr was
directed to the production of information or the creation of a
system and not to the preparation or production of the forms.
He referred to the principle that there can be no copyright in
information or ideas and argued, in effect, that Mr Barr was
not basically concerned with the production of documents but
with information leading to a system which he wanted to put
into operation. I do not think there is any substance in this
argument. Mr Barr's activities were not directed to the produc
tion of non-copyright information to be made available to the
public but to the production of compilations of a particular
kind, designed and arranged in a particular way and containing
and expressing information in a particular manner. A some
what similar argument to the one addressed to me in this case
was advanced by counsel and rejected by the Court in Football
League Ltd y Littlewoods Pools Ltd (1959) 2 All ER 546 (Ch
D), a case to which Mr Ipp referred. See further Ladbroke Ltd
y William Hill Ltd (1964) 1 All ER 465 (HL) where many of
the aspects that arise in this case were considered and where
Lord REID made the interesting observation at 470F that the
cases where copyright has been denied to a compilation are
comparatively few.
The plaintiff is entitled to succeed in this action.
I turn now to the relief which ought to be given.
There will, of course, be the usual permanent
injunction. For the defence, it is said no further
remedy should be granted; the defendant has
brought itself within the relevant provisions of
section 22 of the Copyright Act.
22. Where proceedings are taken in respect of the infringe
ment of the copyright in any work and the defendant in his
defence alleges that he was not aware of the existence of the
copyright in the work, the plaintiff is not entitled to any remedy
other than an injunction in respect of the infringement if the
defendant proves that at the date of the infringement he was
not aware, and had no reasonable ground for suspecting that
copyright subsisted in the work; but if at the date of the
infringement the copyright in the work was duly registered
under this Act, the defendant shall be deemed to have had
reasonable ground for suspecting that copyright subsisted in the
work.
The plaintiff's forms were not registered under
the statute. The defendant says it was not aware
copyright subsisted in the forms and it had no
reasonable grounds for suspecting that copyright
did subsist. As has been said by others, this is a
somewhat odd and ill-worded provision.
Mr. Palin, the defendant's general manager,
testified as to a practice among some companies in
this line of business, to deliberately copy, if they
see a market, their competitor's forms. For that
reason, he assumed copyright did not subsist in
any business forms at all. That was, as I see it, an
unwarranted assumption to make.
The defendant was wrong, in law and in fact, in
its view that the plaintiff's forms could not be the
subject of copyright.
The defendant, and its officers, have not proved,
to my satisfaction, they had "no reasonable
grounds to suspect copyright subsisted" in the
forms. To my mind, there were reasonable grounds
to assume copyright might well exist. The defend-
ant chose to take that chance. A wrong assessment
of the legal and factual position cannot be an
excuse to avert the remedy of damages and an
accounting of profits, as well as the other relief
claimed by the plaintiff.
An earlier order has been made that the matter
of damages and profits be the subject of a
reference.
The plaintiff is entitled, as well, to costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.