Judgments

[2000] 4 F.C. 195

A-4-98

Édutile Inc. (Appellant)

v.

Automobile Protection Association (APA) (Respondent)

Indexed as: Édutile Inc. v. Automobile Protection Assn. (C.A.)

Court of Appeal, Décary, Létourneau and Noël JJ.A. —Montréal, March 13; Ottawa, April 19, 2000.

Copyright — Infringement — Appellant claiming copyright in price guides for used automobiles, trucks — Guides directed at consumer clientele using three markets described in three columns — Whether “compilation” protected by Copyright Act — Originality for copyright purposes found in form chosen to express idea — Appellant’s copyright resulting from selection, layout of two juxtaposed columns dealing with “Private Sale” market, “Retail Value” market — Work independently created by author, displaying minimal degree of skill, judgment, labour — Respondent reproducing in own guide original feature of appellant’s guide — “Substantial part” of appellant’s work appropriated — Permanent injunction granted — Matter referred back to F.C.T.D. for assessment of damages other than exemplary, moral damages.

This was an appeal from a Trial Division decision dismissing an action for a permanent injunction on the ground that the guides published by appellant did not exhibit the necessary creativity to merit protection under the Copyright Act. In 1994, the appellant published two works: “Used Car Price Guide includes new cars (Spring/Summer 1994)” and “Used Truck Price Guide includes new trucks (Spring/Summer 1994)”, both targeted at consumers rather than dealers. For the purposes of its guides, the appellant selected three types of transaction, namely: “Trade-in”, “Private Sale” and “Retail Value”, which were set out in three columns placed vertically, the “Private Sale” column being in the middle, the “Trade-in” on the left and “Retail” on the right. The appellant sought copyright over what the Court called a sub-compilation, alleging that no guide before its own was directed at consumer clientele using the three markets described in the three columns of its guides. In early 1996, the respondent published its own price guide which, in the appellant’s submission, infringed its copyright. Two issues were raised on appeal: (1) whether a copyright subsisted in the appellant’s work, and (2) if so, whether that copyright was infringed by the respondent’s guide.

Held, the appeal should be allowed.

(1) The appellant’s guides are works resulting from the selection or arrangement of data, but are they a “compilation” protected by the Copyright Act? The history, nature and scope of the protection provided by the Act for compilations has recently been considered by the Federal Court of Appeal in Tele-Direct (Publications) Inc. v. American Business Information, Inc., a decision which the Trial Judge was unaware of when he released his judgment herein. Since the adoption of the North American Free Trade Agreement Implementation Act, a “compilation” enjoys independent protection which is now provided by section 2 of the Copyright Act. In the Tele-Direct case, it was said that, 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. While not defined in the Act, the word “author” conveys a sense of creativity and ingenuity. In claiming copyright over its work, the appellant relied not on the presentation of the columns but on the selection and presentation, until then unavailable, of the standards for comparison. The fact that another guide existed was irrelevant as originality for copyright purposes is to be found in the form chosen to express the idea, not in the eventual recipients or users of the form selected. The Trial Judge erred in failing to take into account the testimony of the president of the respondent itself, who admitted that setting out the “private sale” market and the “retail value” market side by side in columns was a “brilliant”, “innovative” move. In using the “private sale” category and placing it in a column beside another column relating to the retail value, the appellant organized its information according to unpublished standards of selection for the first time in Quebec and in Canada. Such a work was independently created by the author and displayed at least a minimal degree of skill, judgment and labour in its overall selection or arrangement. Copyright accordingly subsisted, resulting from the selection and layout of two juxtaposed columns, one dealing with the “private sale” market and the other with the “retail value” market.

(2) It was admitted by the respondent’s president that the Association had reproduced in its guide what he acknowledged to be the original feature of the appellant’s guide. The question here was whether a “substantial part” (Act, subsection 3(1)) of appellant’s work had been reproduced. To determine whether a “substantial part” of a protected work has been reproduced, it is not the quantity as much as the quality and nature of what was reproduced that matters. The respondent appropriated a “substantial part”, indeed the very essence, of the appellant’s work within the meaning of the case law. In terms of quality and nature, what clearly distinguished the appellant’s guide and what the respondent’s guide clearly took over, was the layout. Without this borrowing, the respondent’s guide would be of no interest to consumers. As to the appropriate remedies, the permanent injunction sought by the appellant should be granted. It appeared that counsel, as well as the Trial Judge, assumed that the assessment of damages would be the subject of a separate proceeding. However, appellant’s counsel stated at trial that his client was claiming only $1 as exemplary and moral damages. The matter was accordingly referred back to the Trial Division for the assessment of damages other than exemplary and moral damages.

STATUTES AND REGULATIONS JUDICIALLY CONSIDERED

Copyright Act, R.S.C., 1985, c. C-42, ss. 2 “compilation” (as am. by S.C. 1993, c. 44, s. 53), 3(1) (as am. by S.C. 1997, c. 24, s. 3), 13 (as am. idem, s. 10).

Federal Court Rules, 1998, SOR/98-106, r. 386, Tariff B, Column I.

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

CASES JUDICIALLY CONSIDERED

APPLIED:

Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22 (1997), 154 D.L.R. (4th) 328; 37 B.L.R. (2d) 101; 76 C.P.R. (3d) 296; 221 N.R. 113 (C.A.); leave to appeal to S.C.C. refused [1998] 1 S.C.R. xv; 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.).

REFERRED TO:

Éditions JCL Inc. v. 91439 Canada Ltée, [1995] 1 F.C. 380 (1994), 120 D.L.R. (4th) 225; 58 C.P.R. (3d) 38; 175 N.R. 241 (C.A.); Breen v. Hancock House Publishers Ltd. (1985), 6 C.I.P.R. 129; 6 C.P.R. (3d) 433 (F.C.T.D.); Ladbroke (Football), Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.); Beauchemin v. Cadieux (1900), 10 B.R. 255 (Qué.); affd by (1901), 31 S.C.R. 370.

AUTHORS CITED

Pouillet, Eugène. Traité théorique et pratique de la propriété littéraire et artistique et du droit de représentation. Paris: Imprimerie et Libraire générale de jurisprudence, 1879.

Vaver, David. Copyright Law, Toronto: Irwin Law Inc., 2000.

APPEAL from a Trial Division decision ((1997), 81 C.P.R. (3d) 338; 143 F.T.R. 210) dismissing an action for a permanent injunction on the ground that the guides published by appellant did not display sufficient creativity to merit Copyright Act protection. Appeal allowed.

APPEARANCES:

Christopher Mostovac for appellant.

Jacques Castonguay and Marc Migneault for respondent.

SOLICITORS OF RECORD:

Ravinsky, Ryan, Montréal, for appellant.

Castonguay, White, Brassard, Montréal, for respondent.

The following is the English version of the reasons for judgment rendered by

[1]        Décary J.A.: This appeal concerns the copyright of a publisher of price guides for used automobiles and trucks. At trial Dubé J. said that in his opinion[1] the guides of the appellant (Édutile) did not have the necessary creativity to benefit from the protection of the Copyright Act (the Act)[2] and that, even if copyright subsisted, the guide published by the respondent Association (the APA) had not contravened the appellant’s guides. He accordingly dismissed the action for a permanent injunction brought by the appellant.

Facts

[2]        The facts are relatively straightforward. The appellant, a small business whose president and sole shareholder is Michel Gagnon, in 1994 published a guide titled “Used Car Price Guide includes new cars (Spring/Summer 1994)” and another guide titled “Used Truck Price Guide includes new trucks (Spring/ Summer 1994)”. These guides were targeted at consumers, as opposed to other guides already on the market such as the Canadian Red Book and Canadian Black Book, which were more intended for dealers. The Édutile guides were published in French and English twice a year and distributed throughout Canada.

[3]        For the purposes of its guides, the appellant selected three types of transaction, namely:

(1) “Trade-in” (“Valeur Marchand”), which described “the trade-in value of a used vehicle when purchasing of a new vehicle” and which was replaced in 1995 by “Valeur d’échange” because the expression “Valeur Marchand” might suggest it was the market value,

(2) “Private Sale”, which described “the value of a used vehicle in a transaction between two private consumers”, and

(3) “Retail Value”, which described “the price that would be paid for a used vehicle at a dealership”.

These categories were set out in three columns placed vertically, the “Private Sale” column being in the middle, flanked by the “Trade-in” on the left and “Retail Value” on the right. The corresponding French terms were “Valeur d’échange” on the left, “Vente Privé” in the middle and “Valeur Détail” on the right.

[4]        In 1994 Édutile itself undertook to determine and verify the prices which it posted in each of the three columns. In 1995 it joined forces with the APA to have it verify, for consideration, the prices determined by Édutile. As there was no consensus on the amount of remuneration the agreement was not renewed in 1996. The APA, which had for some time been desirous of publishing a price guide for consumers itself, published one in early 1996. In Édutile’s opinion the APA guide infringed its copyright and it promptly sought an interim injunction to prevent the APA selling its guide. The application for an interim injunction was dismissed, as was the application for an interlocutory injunction filed subsequently.

[5]        The respondent in the case at bar did not argue that if there was copyright the appellant was not its owner within the meaning of section 13 [mod. par L.C. 1997, ch. 24, art. 10] of the Act.

Existence of copyright

[6]        I will describe below the features of the APA guide, which are not relevant at this initial stage of the discussion, in which the Court must determine whether the Édutile guides deserved protection under the Act regardless of the subsequent publication of rival guides.

[7]        The appellant here pleaded copyright over a “compilation”. The history, nature and scope of the protection provided by the Act for compilations has recently been considered by this Court in Tele-Direct (Publications) Inc. v. American Business Information, Inc.,[3] a judgment which had just been rendered at the time Dubé J., who was not made aware of it, released his own. It is worth noting that since the adoption of the North American Free Trade Agreement Implementation Act,[4] a “compilation” enjoys independent protection now provided by section 2 [as am. by S.C. 1993, c. 44, s. 53] of the Copyright Act, which defines a compilation as a work “resulting from the selection or arrangement of … [data] or of parts thereof”. The appellant’s guides are works resulting from the selection or arrangement of data. Does this mean that this “compilation” is protected by the Copyright Act?

[8]        To describe the state of Canadian law on this point, I need only reproduce certain passages from the Court’s judgment in Tele-Direct [at paragraphs 28-29, 32, pages 36-39]:

(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 [sic] in the development of the sub-compilation …

…

It is true that in many of the cases we have been referred to, the expression “skill, judgment or labour” has been used to described 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]. 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. 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.

…

Professor Siebrasse observed that “intellectual property law must strike a balance between protecting the new products of inventive labour and allowing 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. [Footnotes omitted.]

[9]        In Tele-Direct, the finding of fact arrived at by McGillis J. at trial [(1996), 27 B.L.R. (2d) 1 (F.C.)], and approved on appeal, was the following (paragraph 6 of appeal reasons [at page 29]):

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.

[10]      Somewhat as in Tele-Direct, the appellant here is not arguing that its guides should benefit from copyright in their entirety. Instead it argues for copyright in what I would call a sub-compilation. What it is actually alleging is that no guide before its own was directed at consumer clientele using the three markets described in the three columns of its guides and that the original feature of its guides results from the selection of the “Private Sale” market which it made and the presentation of the “Private Sale” market in a central column between a column setting out the “Trade-in” market and another setting out the “Retail Value” market. The appellant thus relies not on the presentation of the columns or on the existence of three columns, but on the selection and presentation of the standards for comparison, selection and presentation which it considers was previously unavailable.

[11]      At paragraph 18 [page 344] of his reasons, the Trial Judge dismissed the appellant’s argument as follows:

In the case at bar, I must conclude that Édutile’s work is not original. First, contrary to the testimony of Michel Gagnon, the owner of Édutile, a guide for Canadian consumers entitled Évaluation des Voitures Neuves et d’Occasion already existed before Édutile’s guide was published. Second, Édutile’s three price columns already existed in the Canadian Red Book. Third, Édutile’s compilation did not in my view require personal effort or particular knowledge, since it came from information that was common knowledge in the used car market and was in the public domain.

[12]      The Judge, who I repeat did not have the reasons of this Court in Tele-Direct before him, made a number of errors of fact and law in this short passage. The fact that another guide for use by consumers existed is not relevant in the case at bar, as originality for copyright purposes is to be found in the form chosen to express the idea, not in the eventual recipients or users of the form selected. Additionally, one of the markets selected by Édutile—that of “Private Sale”—was not among those selected by the Canadian Red Book. Further, on the evidence the data relating to the “Private Sale” market was used for the first time in a guide of this type, and the fact that this data might be in the public domain—which is usually the case with compilations—does not as such impact on the original nature of its selection and presentation. Finally, and perhaps most importantly, the Judge did not take into account the testimony of Georges Iny, president of APA itself—an opposing witness if there ever was one, and a specialist in the area—which admitted the extent to which the idea embodied in the Édutile guides was original. In this connection it will suffice to cite the following passages from the testimony of Mr. Iny in his cross-examination by counsel for the appellant:

[translation]

A.   … What was interesting for us in the case of Édutile: “Trade-in”, which proved impossible, and “private”, the fact that someone had made a “private” column. We found that innovative.

Q.   The “private” column was innovative?

A.   Yes. They did not invent the notion of private sale, but to our knowledge it was the first guide which put it like this and without making a calculation to Mr. Edmonston or elsewhere … [Transcript, vol. 2, October 23, 1997, at pp. 172-173.]

A.   … the brilliant or new idea was to put a similar price in a column between the other two columns: and I find that that is a good move.

Q.   A good move?

A.   Yes.

Q.   Which you adopted yourself?

A.   Which we took, adopted, yes ….

Q.   So, you admit that this innovative idea used by Édutile of placing a “private” price column between their “trade-in” and “retail” columns was an innovative idea?

A.   Yes.

…

A.   O.K. It simply means that we were using private prices before, there were other guides that had private prices: this is the only guide where a “private” column was systematically placed beside each retail price. [Transcript, vol. 2, October 23, 1997, at pp. 174-176.]

A.   … but the fact remains that the central column in the three columns, it was the first time in columns that I saw a “private” figure next to a “retail price”. It had been done in other ways previously. And at the time Mr. Gagnon [Édutile] came to see us, so far as I know, at least in Quebec, no one was doing it.

Q.   And you decided to use it?

A.   We were actually already doing it every day. People call us: how much can I get for my car? How much should I be paid for the car? We take a Red Book, we say: you have a “wholesale average” of such an amount, you have a “retail average” of $2,500 more: the price to an individual is halfway between these two, sir. You can call A.P.A. now and get a price made in that way. [Transcript, vol. 2, October 23, 1997, at pp. 220-221.]

Q.   Right. My question is as follows, Mr. Iny. You say you find something innovative. My question is, what you found to be innovative, did you copy it?

A.   I did not copy. But there were … to my knowledge, it is the first time it was published in that way. The word “copy”, I find a little strong ….

A.   In any case, I should say that to my knowledge it was first time this column was presented in that way in Canada, so far as I know.

Q.   And is that what was innovative?

A.   Yes, collecting information with the heading, yes, as such. Rather than saying as we have seen in other guides: take X per cent on that price.

Q.   And have you done this yourself?

A.   Yes. [Transcript, vol. 2, October 23, 1997, at pp. 222-223.]

Q.   … When you say that the Guide has nothing original about it, I imagine that you are excluding the innovative concept of introducing a column with a private price?

A.   Yes, the assembling of the data, but not the existence of the data. It existed: we provide information like that every day.

Q.   The data existed, but the assembling, the material expression of that data, that is what was original?

A.   In columns, yes. It already existed in other forms. There were people who were making up guides which said: private purchases, dealer purchases. But they had evaluations of used cars with texts and photographs of the cars. That was something else. [Transcript, vol. 2, October 23, 1997, at p. 231.]

[13]      I conclude from this testimony that the fact of setting out the “Private Sale” market and the “Retail Value” market side by side in columns was a “brilliant”, “innovative” move. The Trial Judge could not ignore this decisive testimony, which was to some extent corroborated by that of the designer of the Édutile guides, Michael Jetté, who had described the objective of simplicity that he was seeking and the efforts he made to arrive at it,[5] and by that of the owner of Édutile, Michel Gagnon, who said he had tried to find [translation] “an original concept that would correspond to the real market for the consumer”.[6] It is not easy in compilation situations to draw a line between what signifies a minimal degree of skill, judgment and labour and what indicates no creative element. The appellant’s evidence was limited and not very convincing, but Mr. Iny’s testimony was such that the Court really had no choice but to rule in favour of Édutile.

[14]      In Tele-Direct, McGillis J. concluded [at paragraph 6, page 29] that Tele-Direct had “arranged its information, … according to accepted, commonplace standards of selection in the industry”. Here, on the contrary, the undisputed evidence was that in using the “Private Sale” category and placing it in a column beside another column relating to the retail value, Édutile organized its information according to unpublished standards of selection for the first time in Quebec and in Canada. A guide organized in this way is, to use this Court’s words in Tele-Direct, at paragraph 28 [page 36], “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”.

[15]      Copyright accordingly subsists, resulting not from the three-column layout nor from the selection or designation as such of the three markets used by the appellant, but from the selection and layout of two juxtaposed columns, one dealing with the “Private Sale” market and the other dealing with the “Retail Value” market. The evidence does not support a conclusion that selection of the “trade-in” market and its presentation in the left-hand column was creative or innovative.

Infringement of copyright

[16]      Having established that copyright subsists within these limits, the Court must determine whether the subsequent publication of a “Used Automobile Price Guide” by the APA in 1996 infringed Édutile’s copyright.

[17]      Édutile admitted that the APA guide had a title different from its own (“Used Automobile Price Guide” instead of “Used Car Price Guide”), that its format, colour and external appearance were not the same and that it was only published in English. It further admitted that the introductory pages were different, that the prices shown in each of the columns were not the same and were the result of independent labour and that the automobiles were classified beginning with the older ones (APA guide) rather than the more recent ones (Édutile guides). Édutile further admitted that the market referred to in the left-hand column was the “wholesale” market in the APA guide (which means sales between dealers) and the “trade-in” market in its own guide (which refers to exchanges between a consumer and a dealer), but it argued that the explanatory notes published at the start of the APA guide indicated that “the wholesale price also provides a guide to what the dealer may offer a private seller for his or her vehicle”, which it said referred to the “trade-in” market. In this connection, the APA president explained that the “trade-in” category was in his opinion too subjective and unreliable—he had in fact recommended to Édutile himself, when they were doing business together, that this category be replaced by that of “wholesale”—and that accordingly in his own guide he had used the “wholesale” market.

[18]      Having noted these differences, the fact remains that it was established by the admission of the APA president himself that the latter had reproduced in its guide what he himself said was the original feature of the Édutile guide.

[19]      Is such reproduction an infringement within the meaning of the Copyright Act?

[20]      Subsection 3(1) of the Act (amended by S.C. 1997, c. 24, s. 3) states that:

3. (1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever ….

[21]      There was no reproduction here of the protected work. However, was there reproduction of a “substantial part” of the work?

[22]      To determine whether a “substantial part” of a protected work has been reproduced, it is not the quantity which was reproduced that matters as much as the quality and nature of what was reproduced.[7] In Beauchemin v. Cadieux,[8] Blanchet J. cited with approval at page 281 this passage from Pouillet, Propriété littéraire, No. 507:

[translation] “It would be risky to confine oneself to determining the number or extent of the borrowings: it is their quality and nature that should be looked at.”

To enter upon a simple calculation of percentages or proportions in order to determine whether there was an infringement would be to unduly minimize the protection given to copyright. In a copyright matter a part may be as important as the whole, and this seems especially relevant when we are considering arrangements of data which are in the public domain.

[23]      It seems clear that APA appropriated a “substantial part”, indeed the very essence, of Édutile’s work within the meaning of the case law. In quantity terms, the essence of the APA and Édutile guides is the presentation on each page of a column describing the “Private Sale” market beside a column describing the “Retail Value” market. In terms of quality and nature, what clearly distinguished the Édutile guide and what the APA guide clearly took over, was precisely this layout. Without this borrowing the APA guide would be of no interest to consumers. I do not attach great importance to the fact that the left-hand columns do not have the same title and at least on their face do not refer to the same market, as the evidence disclosed that it is the middle column, with its unpublished market, beside a column describing the “Retail Value” market, which was of particular interest to the APA.

[24]      I note in passing that the evidence further disclosed that the APA reproduced the original portion of the Édutile guide with full knowledge of the facts; that as soon as the APA guide was published the sales of the Édutile guide dropped significantly; and that the market covered by both guides is the same outside of Quebec.

Appropriate remedies

[25]      The action must therefore be allowed and the permanent injunction sought by Édutile granted.

[26]      In its “amended statement of claim for permanent injunction”, the plaintiff sought the following conclusions:

[translation]

35. The plaintiff reserves all its remedies in damages against the defendant;

…

FOR THESE REASONS, MAY IT PLEASE THIS HONOURABLE COURT TO:

ALLOW the instant application;

ORDER the defendant to refrain subject to all legal penalties from writing, publishing, distributing, selling, directly or indirectly or serving as an intermediary in the distribution, sale or design of an automobile guide using the three categories designed and developed by the plaintiff;

ORDER the defendant to withdraw or cause to be withdrawn any copies of its guide titled “Used Automobile Price Guide (Spring/Summer 96)” and to submit a list of its sales of this Guide to the plaintiff;

RESERVE any other right and/or remedy to which the plaintiff may be entitled in the circumstances;

MAKE any order which this honourable Court shall think appropriate;

THE WHOLE with costs and damages, including the cost of expert witnesses (if any).

[27]      These conclusions do not err on the side of clarity. Counsel for the appellant recognized this since in their appeal memorandum they introduced additional or more specific conclusions. It goes without saying that a party cannot add, by a memorandum of fact and law, and especially on appeal, conclusions which it had not sought in the statement of claim filed at trial.

[28]      Having said that, the respondent APA did not take note of these deficiencies in the defence it filed and did not request further particulars as to the nature and amount of the damages claimed. What is more, it appeared from the transcript of the trial hearings that counsel for Édutile—apparently unfamiliar with the rules and practice of the Federal Court—assumed that the assessment of damages would be the subject of a separate proceeding, perhaps before an arbitrator appointed by the Court, once the copyright infringement had been decided on. This also appears to have been assumed by the Trial Judge and counsel for APA.

[29]      In the circumstances, the fairest and most practical solution would be to return the case to the Trial Division for damages to be determined. However, I note that in his argument before the Trial Judge counsel for the appellant said he was claiming only the amount of $1 as exemplary and moral damages. It is clear that the appellant could not be awarded more than it claimed on this head.

[30]      In closing, I would point out to counsel for the parties that Rule 386 of the Rules of this Court [Federal Court Rules, 1998, SOR/98-106] permits a dispute resolution conference to be held under the supervision of a prothonotary or a judge. This is undoubtedly a route which counsel might explore once they are back at the trial level.

Disposition

[31]      I would accordingly allow the appeal, reverse the trial judgment, allow the action and rule that there was an infringement of copyright. I would direct the APA to refrain from writing, publishing, distributing, selling, directly or indirectly, an automobile guide reproducing in two juxtaposed columns the “Private Sale” market and “Retail Value” market, or serving as an intermediary in the distribution, sale or design of such a guide, and I would refer the case back to the Trial Division for damages other than exemplary and moral damages to be assessed.

[32]      The appellant will be entitled to costs on appeal and at trial, but in view of the deficiencies in the appeal memorandum, which contained no specific reference to the appeal book and which did not even mention this Court’s leading judgment in Tele-Direct, the fees awarded for the memorandum of fact and law and for the hearing of the appeal will be established in accordance with column I of Tariff B.

Létourneau J.A.: I concur.

Noël J.A.: I concur.

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