Executive Summary: Key Legal and Evidentiary Issues

• Appeal from an Associate Judge's decision refusing to compel answers to discovery questions in a copyright infringement action involving university course materials

• Central dispute concerned whether questions asking plaintiffs to match "element-by-element" copied portions were proper discovery questions or improper requests for legal positions

• Standard of review analysis determining whether the Motion Judge's classification involved mixed fact and law (palpable and overriding error standard) versus pure questions of law (correctness standard)

• Application of copyright law principles requiring qualitative and holistic assessment of substantial copying rather than isolated or piecemeal element-by-element comparison

• Relevance of disputed questions to defendants' fair dealing defence, which requires analysis of the quantity of work taken

• Distinction between factual inquiries and questions that seek legal arguments or positions disguised as factual requests

Background of the copyright dispute

The University of Toronto, along with three professors—Robert Gazzale, Lisa Kramer, and Ai Taniguchi—brought a copyright infringement action against Easy Group Inc. and its affiliated companies (Easy 4 Education Canada Inc., Easy 4.0 Education Inc., and Easy 4.0 Education UTSC Inc.). The defendants operate as a related group of companies offering tutoring services to Mandarin-speaking students at the University. The plaintiffs alleged that the defendants' business involved the unauthorized reproduction and distribution of original course materials, including lecture slides, syllabi, notes, and exams. The plaintiffs asserted these materials constitute works owned by the University and the professors, and the defendants' unauthorized reproduction constitutes copyright infringement under the Copyright Act, RSC 1985, c C-42.
The defendants denied infringement and raised a defence of fair dealing. They also asserted a counterclaim seeking damages for making false and misleading statements under the Trademarks Act, RSC 1985, c T-13, and false or misleading public representations under the Competition Act, RSC 1985, c C-34.

The discovery dispute

The parties agreed to a two-stage process for motions to compel answers to refused discovery questions. The dispute concerned a "Draft Infringement Table" provided by the plaintiffs as an "assistive aid" in advance of discoveries. The table included columns identifying page numbers from the plaintiffs' university course material and corresponding pages where that material allegedly appears in the defendants' course packs. The Infringement Table was created by the plaintiffs' counsel, who stated in the cover letter that the plaintiffs reserved the right to update it "as and when appropriate, including as further acts of infringement come to light."
Two specific questions became the focal point of disagreement. Question 18E asked the plaintiffs to "Match, element-by-element, the portions of the purportedly infringed document with portions of the purportedly infringing document." Question 18F requested the plaintiffs to "Provide the portion of the page, and of the document, the university asserts has been copied." The defendants sought to compel answers, arguing they were purely factual and relevant to unadmitted allegations at the heart of the plaintiffs' case.

The Motion Judge's decision

Associate Judge Cotter declined to compel the plaintiffs to answer the Disputed Questions in his decision reported as The Governing Council of the University of Toronto et al v Easy Group Inc et al, 2024 FC 206. For Question 18E, the Motion Judge found it was not an appropriate question because it was asking for a position on a legal issue or argument. He noted that questions of law or argument are improper. The Motion Judge emphasized that subsection 3(1) of the Copyright Act provides that copyright means "the sole right to produce or reproduce the work or any substantial part thereof." He explained that whether a substantial part of a work has been copied involves a qualitative and holistic assessment as to whether a substantial portion of the author's skill and judgment has been copied, and that the Court will not look at isolated passages but the works as a whole, referencing Cinar Corporation v. Robinson, 2013 SCC 73. Question 18F was dismissed for the same reasons.

The appeal

The defendants appealed, submitting the Motion Judge erred in classifying the Disputed Questions as questions of law or argument when they were "purely factual and relevant to unadmitted allegations at the heart of the Plaintiffs' case." They argued the Motion Judge failed to consider that one cannot assess whether reproduced elements constitute a substantial part of a work without first identifying what those elements are, which they characterized as "a pure question of fact." The defendants also submitted the Motion Judge erred by failing to consider the relevance of the Disputed Questions to their fair dealing defence, which requires the Court to consider the quantity of the work taken.

The Court's analysis

Justice Whyte Nowak held that the determination of whether a particular discovery question is permissible or relevant is typically a question of mixed fact and law subject to a standard of review of palpable and overriding error. While acknowledging the defendants' valid interest in understanding the plaintiffs' allegations of infringement, Justice Whyte Nowak found that the defendants had glossed over the actual wording of the Disputed Questions and their context. The Court observed that while the questions appeared to be based on hallmarks of factual inquiry, the true usefulness of any answer lay in what the plaintiffs say amounts to infringement, which calls for a legal position or argument.
The Court found particularly significant the defendants' use of the word "elements" in the first Disputed Question. In Cinar Corporation v Robinson, the Supreme Court of Canada approved the qualitative and holistic approach to assessing copyright infringement and distinguished it from an approach which looks at isolated passages or "elements" in a piecemeal fashion.
Regarding the fair dealing defence argument, the Court noted the defendants acknowledged the Motion Judge was alive to the law requiring relevance to be assessed in relation to all pleadings and had referred to the defendants' fair dealing defence elsewhere in his decision. Moreover, the defendants did not raise the relevance of the Disputed Questions to their fair dealing defence on their motion to compel, meaning the Motion Judge did not commit a palpable and overriding error in failing to consider a point of relevance that was not argued.

Final judgment and outcome

The Court found no palpable and overriding error in the Motion Judge's holding that the Disputed Questions call for a position on a legal issue or argument which are not proper questions on discovery. The defendants' motion was dismissed. The plaintiffs—The Governing Council of the University of Toronto, Robert Gazzale, Lisa Kramer, and Ai Taniguchi—were successful on this appeal. They were awarded costs in the amount of $5,750, inclusive of disbursements and taxes, to be paid in any event of the cause.