Milliken & Co. v. Interface Flooring Systems (Canada) Inc.

Milliken & Co. v. Interface Flooring Systems (Canada) Inc.
Court (s) Database
Federal Court Decisions
Date
2003-10-28
Neutral citation
2003 FC 1258
File numbers
T-3016-92
Decision Content
Date: 20031028
Docket: T-3016-92
Citation: 2003 FC 1258
BETWEEN:
MILLIKEN & COMPANY AND
MILLIKEN INDUSTRIES OF CANADA LTD.
Plaintiffs
- and -
INTERFACE FLOORING SYSTEMS (CANADA) INC.
Defendant
ASSESSMENT OF COSTS - REASONS
CHARLES E. STINSON
Assessment Officer
[1] A copy of these reasons is filed today in court file T-1212-95 and applies there accordingly. The Plaintiffs alleged that the Defendant infringed their copyright relative to a design (hereafter, the "Mangrove Design") for carpet tiles installed at the Calgary International Airport in 1991 and 1992. This action was eventually joined with court file T-1212-95 (the only plaintiff being Milliken & Company: hereafter" Milliken") which addressed copyright and industrial design infringement relative to the Mangrove Design for carpet tiles installed in 1995 at the same airport. At trial, Milliken received a consent judgment with costs for the industrial design issues. Both actions relative to the copyright issues were dismissed with costs. In court file T-3016-92, the Defendant's counterclaim for copyright infringement relative to its Interface Design for carpet tiles was dismissed with costs. The Plaintiffs' appeals were dismissed with costs.
[2] Both sides agreed that their apportionment arguments below addressing fees would also apply to associated disbursements. Both sides agreed that the Defendant's industrial design infringement liability, settled at $13,820.30, would be offset against any costs found owing by the Plaintiffs to the Defendant (to be done informally between the parties). At the outset of the hearing before me, the Defendant objected to short notice of the Plaintiffs' material and asked for $2,500.00 for the day's appearance. The Plaintiffs asserted that the parties had been aware of one another's bill of costs and position for several months as a function of failed negotiations. In the circumstances, I will not allow anything extra for the Defendant's appearance. Neither side included item 26 claims for the assessment of costs. My inclination would have been to allow the same for each side, with no application of apportionment, resulting in amounts cancelling out each other given that each side claimed interest on costs from the same date. Therefore, I have not added any allowance in each side's bill of costs for the assessment of costs. The presentation of items below generally follows the order in which they were argued because both sides built upon previous positions as they addressed each item in turn. However, I have grouped certain items not argued together if they were related. The agreements achieved between counsel before me for fees and disbursements were noted on the bills of costs as assessed, but not in these reasons: I commend counsel for their civility throughout in resolving several such issues.
[3] The Defendant characterized this litigation as three claims, two actions, one set of discoveries, one trial and one appeal and noted that the Plaintiffs' solicitor maintained a single office file for it (the Plaintiffs' solicitor interjected to note that two office files eventually became one file). The Defendant argued that most of the allegedly infringing sales were the subject of T-3016-92 and were the driving force in the litigation, ie. copyright infringement issues represented approximately 95% of the work, leaving about 5% associated with industrial design. The settlement correspondence supports that premise, ie. the April 29, 1997 overture from the Plaintiffs sought $350,000 for copyright infringement compared to the agreed-upon $13,820.30 above for industrial design infringement. The Defendant noted that the Plaintiffs' November 12, 1997 settlement offer addressed copyright, but not industrial design and estimated potential damages, inclusive of interest, but exclusive of costs, at between $300,000.00 and $700,000.00. The Defendant asserted that the Plaintiffs pursued their copyright infringement claims despite success in the industrial design infringement claim because the implications of injunctive relief relative to copyright were much more significant.
[4] The Defendant argued that the costs associated with its copyright counterclaim (the Interface Design) are easily distinguishable from those associated with the Plaintiffs' copyright actions (the Mangrove Design) because of the differences in their respective patterns. As well, the single sale of approximately 660 square yards of carpet tile in 1995 means that the approximately 11,500 square yards at issue in T-3016-92 makes 1991-1993 the key time period in this assessment of costs. Effectively, T-1212-95 was a footnote to the substantive issues addressed by T-3016-92. The Defendant asserted that the Plaintiffs pursued these copyright claims notwithstanding reasonable settlement offers, ie. $60,000.00 inclusive of everything, and notwithstanding obvious problems with proving what they had pleaded, ie. their failure to lead evidence at trial on the creation date of the Mangrove Design. There were separate affidavits of documents with some overlap, but oral discoveries were conducted in an omnibus fashion for all claims and actions. The trial addressed only the Plaintiffs' copyright claims given prior disposition of the industrial design and counterclaim issues.
[5] The Plaintiffs argued that this was an amalgamated proceeding consisting of three causes of action: (1) the 1991, 1992 and 1995 sales of carpet tiles with the Mangrove Design and for which the factual issues of copyright infringement were not difficult; (2) the Defendant's copyright infringement counterclaim for a completely different design (the Interface Design) and (3) the 1995 industrial design infringement claim (the Mangrove Design) which is significant relative to issues of apportionment of costs for discoveries. The Plaintiffs were forced to incur costs to prepare for all three causes of action because the Defendant did not consent to dismissal of (2) and judgment in (3) until the morning of the first day of trial. The Defendant's proposed apportionment above of 95% to copyright and 5% to industrial design does not account for the counterclaim. These three causes of action were distinct and should be considered separately for the purposes of costs. The Plaintiffs argued that the Tariff does not permit an assessment of costs as proposed by the Defendant.
(Tariff)
Item 2: Statement of Defence (T-3016-92), 6 units claimed, available range 4 - 7 (hereafter, the numbers in brackets following the claimed units represent the available range)
Item 2: Statement of Defence (T-1212-95), 6 units claimed (4 - 7)
Item 1: Statement of Claim (T-1212-95), 6 units claimed (4 - 7)
Item 2: Defence to Counterclaim (T-3016-92), 6 units claimed (4 - 7)
[6] Initially, counsel for both sides agreed before me that I should give the same amount for each side's pleadings. However, their subsequent submissions backed away from that agreement. Counsel also agreed before me that the 81% apportionment asserted in T-1212-95 (13 of 16 paragraphs in the statement of defence) as attributable to copyright infringement should be reduced to 50% and that 50% should also apply to Milliken's pleading in T-1212-95.
[7] The Plaintiffs argued that 4 units are sufficient for a statement of defence (T-3016-92) addressing only two distinct and simple sales. The counterclaim occupied 13 of 27 paragraphs. The Plaintiffs argued that 4 units are sufficient for the statement of defence (T-1212-95) because the work done for the defence in T-3016-92 for comparable infringing sales simplified the work in T-1212-95. To the extent that the work for T-3016-92 did not assist T-1212-95, the claimed costs should still be reduced because the Defendant is not entitled to costs associated with the industrial design portion of its defence.
[8] The Defendant referred to the Plaintiffs' premise above to argue that only 4 units should be allowed for the statement of claim (T-1212-95) because its preparation was simplified by work already done in T-3016-92. As well, the work associated with the failed attempt in T-3016-92 to include an industrial design cause of action simplified the work to ready that cause of action in T-1212-95. The Defendant argued that the potential liability asserted by the Plaintiffs justified costs in the upper end of the range for the defences in both T-3016-92 and T-1212-95. The outcome at trial was a function of factual issues pleaded by the Plaintiffs, but not proven. The Defendant asserted that the defences were not merely blanket denials and represented serious consideration, ie. the defence in T-3016-92 was not filed until almost two years after institution and after motions to strike.
[9] Counsel for both sides agreed on 4 units (no apportionment to apply) for the Plaintiffs' Defence to Counterclaim (T-3016-92), as well as figures for several associated disbursements, but the Defendant did object to $121.00 for photocopies. The Defendant argued that the disbursement figures were not a function of precise records, but rather of proposed activity reports for the client, and suggested $10.00 would be reasonable given that no research was necessary for a defence in this type of action. The Plaintiffs argued that pleadings require research and suggested $25.00.
ASSESSMENT
[10] The Rules and Tariff do not use the term "apportionment", but I think that Rule 400(1) and 6(a) likely and collectively allow for that concept. The dilemma for costs represented by T-1212-95, relative to apportionment, illustrates neatly the operation of interlocutory process in the resolution of litigation. That is, the issues of causes of action are framed by pleadings, discarded or distilled via discoveries and motions, and those remaining are addressed at trial. That results occasionally, as here in T-1212-95, in success by both sides relative to discrete causes of action and an award of costs for each. The assessment of costs process must then sort out how to attribute the costs for a single document, such as a pleading, which led to success for one cause of action and failure for another cause of action (here, success for Milliken on industrial design and failure on copyright, both as a function of a single statement of claim: similarly, success for the Defendant on copyright and failure on industrial design, both as a function of a single statement of defence). There are at least two acceptable approaches to address such issues of costs as a function of our Rules and Tariff: (i) allow a lower amount from the available range so as to factor out costs attributable to the failed portion of the document and (ii) apportion between causes of action once an amount suitable for the work in creating the document is selected from the available range.
[11] I concluded at paragraph [7] in Bruce Starlight et al. v. Her Majesty the Queen [2001] F.C.J. 1376 that the same point in the ranges throughout the Tariff need not be used as each item for the services of counsel must be considered in its own circumstances. I have read the pleadings and the interlocutory reasons in the court files. I think that the work to frame pleadings in T-3016-92 should have simplified the work for T-1212-95. However, as noted in Bruce Starlight, supra, some generalization is required between the values in available ranges. These pleadings were not the simplest nor the most difficult to address. I allow 6 and 4 units respectively for the defence in each of T-3016-92 and T-1212-95. I allow 4 units for the statement of claim in T-1212-95. As for the $121.00 for photocopies in the Plaintiffs' bill of costs, I allow $15.00.
Item 5: Defendant's preparation for Plaintiffs' motion dated April 29, 1993, appealing the decision striking the Statement of Claim (T-3016-92): appeal allowed with costs in the cause on October 7, 1993, 6 units claimed (3 - 7)
Item 6: Appearance, 3 units claimed (1 - 3)
[12] The Defendant argued that the importance of resolution in a bilingual country of ambiguities of interpretation between the French and English sections of the Copyright Act relative to the Convention of Berne of 1886 justifies allowances at or near the maximum. This was a novel issue of law vital to the Plaintiffs' entire 1992 copyright action. Both sides used senior counsel for these issues which were eventually decided by the Federal Court of Appeal.
[13] The Plaintiffs characterized this motion as a "pleadings content" matter addressing a straightforward issue of law in a single and simple cause of action and for which the minimum 3 units would ordinarily be sufficient for item 5 preparation. However, the importance of the language issue (French and English) justifies 4 units. The Plaintiffs argued that such "pleadings content" motions do not justify anything above the minimum for items 5 and 6. Therefore, 1 unit per hour for the item 6 appearance is appropriate for a matter lasting two hours.
ASSESSMENT
[14] I find merit in the Defendant's position in these circumstances, at least for item 5 preparation which I allow as presented at 6 units. I allow the item 6 appearance as presented at 3 units per hour: the subtleties of differences here between French and English versions of the statute by themselves do not justify the maximum, nor does the threat often faced by Plaintiffs of having its litigation derailed at an early stage by itself justify the maximum, but the confluence of these factors are notable enough to warrant the maximum in these circumstances.
Item 18: Plaintiffs' (Respondents') preparation of appeal book for Defendant's appeal of the October 7, 1993 Order (A-590-93): appeal dismissed on September 7, 1994, costs to the Plaintiffs (Respondents), 1 unit claimed (1)
Item 19: Plaintiffs' (Respondents') preparation of memorandum and fact of law, 7 units claimed (4 - 7)
Item 22(a): Appearance on appeal, 3 units claimed (2 - 3)
[15] These Federal Court of Appeal items were included in the Plaintiffs' bill of costs for T-3016-92 and relate to the Federal Court decision above dated October 7, 1993, addressing the Convention of Berne of 1886 issues. Counsel for both sides agreed that their results for items 19 and 22(a) should be the same as my allowances for the Defendant's items 5 and 6 above for the October 7, 1993 Order, subject to my conclusions concerning the Defendant's objections to the admissibility of these costs. The Defendant objected to item 18 because the Plaintiffs had no role in preparation of the appeal book. The Defendant argued that paragraph 105.3.1 at page 1-14 in The Law of Costs, Second Edition, Mark M. Orkin Q.C. (2001), which suggests that the phrase "costs to the defendant" has been construed as costs to defendant in the cause, means that the Plaintiffs are precluded from item 19 and 22(a) claims for this interlocutory appeal because their 1992 cause of action was ultimately unsuccessful.
[16] For associated disbursements of $88.75, $54.18 and $1.58 respectively for photocopies, facsimiles and telephone, the Plaintiffs asserted that an appeal case requires such essential and reasonable disbursements including service copies of documents at $0.25 per page. The Defendant argued that most of these charges pre-date the order under appeal and the lack of activity, ie. no factum, did not justify any disbursements. If anything is allowed, it should be about $40.00 comparable to the Defendant's disbursements for the Plaintiffs' April 29, 1993 motion.
ASSESSMENT
[17] Paragraph 105.3.1 in The Law of Costs, supra, refers to Digiandomenico v. Ramos (1994) 92 B.C.L.R. (2d) 286 (S.C. Master), which in turn cites Aziz v. Aziz (1986) 3 B.C.L.R. (2d) 385 (S.C.). I do not think Aziz, supra, applies because the relevant issue there addressed orders silent as to costs. Rule 400(1) in this Court precludes orders or judgments silent as to costs as authority to claim costs. As for Digiandomenico, supra, with respect, I do not think that I would arrive at the same conclusions for an order or judgment not silent as to costs per my reading of Aziz, supra, and because the Rule 400(1) discretion in this Court for interlocutory costs is exercised independently from the result of the judgment, except where expressly provided by language such as "costs in the cause". As well, I doubt that the Rule 400(1) jurisdiction of the Federal Court of Appeal, even for interlocutory appeals, is fettered by a Rule 400(1) award of costs in a judgment of the Federal Court. I allow the item 18 claim as I routinely do for successful respondents because both sides have real obligations in ensuring proper preparation of appeal books. Memoranda were filed in this matter. I allow item 19 and 22(a) claims at 6 units and 3 units per hour respectively. I allow the disbursements as presented because I think their total, regardless of issues with the evidence, reflects the appropriate sense of austerity for costs reasonable for such an interlocutory appeal.
Item 5: Defendant's preparation for Plaintiffs' motion dated November 18, 1993, appealing the decision striking amendments in the Amended Statement of Claim (Rule 1104) (T-3016-92): appeal allowed on December 14, 1993, with costs in the cause, 6 units claimed (3 - 7)
Item 6: Appearance, 3 units claimed (1 - 3)
Item 5: Defendant's preparation for its Rule 419(1) (a) motion dated November 1, 1993, to strike industrial design infringement amendments in the Amended Statement of Claim (T-3016-92): allowed on March 18, 1994, with costs to the Defendants, 6 units claimed (3 - 7)
Item 6: Appearance, 3 units claimed (1 - 3)
Item 5: Plaintiffs' preparation for Defendant's motion December 21, 1993, renewing its Rule 419 application to strike the Plaintiffs' industrial design amendments
(T-3016-92): dismissed on January 17, 1994, with costs to Plaintiffs in any event of the cause, 6 units claimed (3 - 7)
Item 6: Appearance, 3 units claimed (1 - 3)
[18] The Defendant noted that the Court's order dated December 14, 1993, in allowing the appeal relative to Rule 1104 issues, inadvertently addressed the Defendant's Rule 419(1)(a) motion, notwithstanding the parties' agreement before the Court to defer the Rule 419 arguments. This necessitated a subsequent application for directions to permit full argument on the Rule 419(1)(a) issues in turn leading to the March 18, 1994 order striking the industrial design amendments. On January 17, 1994, the Associate Senior Prothonotary dismissed the Defendant's December 21, 1993 motion on the basis that the December 14, 1993 decision had already addressed Rule 419 issues.
[19] The Defendant argued that its item 5 and 6 claims at or near the upper end of the available ranges reflect the importance of these interlocutory issues to the Plaintiffs' entire 1992 industrial design claim. They required the use of senior counsel. The fact that the Court required two distinct hearings to ultimately resolve these issues in favour of the Defendant, effectively ending the Plaintiffs' industrial design claim, coupled with the confusion leading to the premature disposition of the Rule 419 issues on December 14, 1993, demonstrate the difficulty of these proceedings. The Defendant argued that nothing should be allowed for the Plaintiff's item 5 preparation relative to the January 17, 1994 order because the merits of Rule 419 issues were never actually argued given that counsel spent their time that day trying to explain to the Associate Senior Prothonotary the inadvertent disposition on December 14, 1993 of Rule 419 issues not yet argued. As well, no preparation was required additional to that required for the December 14, 1993 appearance. The Defendant suggested 1 unit per hour for item 6 as this was a simple procedural matter.
[20] The Plaintiffs relied on its "pleadings content" argument above to assert that 3 units and 1 unit per hour for each of the Defendant's item 5 and 6 claims respectively are sufficient. This matter was procedural only and the seniority of counsel for appearances of two hours each should not be a factor. The Plaintiffs argued that my allowance for their costs awarded by the January 17, 1994 order should be the same as the Defendants for the March 18, 1994 order because the Plaintiffs' preparation for January 17, 1994, was as if the merits of the Rule 419 issues would be argued.
[21] Counsel agreed on figures for all disbursements for the Defendant except $185.70 (motion to strike industrial design amendments) for a hotel. The Defendant argued that it was a suite with a configuration suitable for working. The Plaintiffs argued that, in the absence of proof of reasonableness, the charge seems high, but left it to my discretion.
[22] Relative to $411.75 and $56.94 respectively for photocopies and facsimiles (motion renewing Rule 419 application), the Plaintiffs conceded there may have been some extra expense, but it was necessary to copy authorities. The Plaintiffs argued that the Defendant's view of what is required for photocopies is generally too restrictive and suggested $50.00 for photocopies, but asserted the $56.94 for facsimiles should remain as is. The Defendant argued that these charges are excessive for a brief motion and suggested $25.00 for each item.
ASSESSMENT
[23] I think that the Rule 419 issues were more difficult to resolve than the Rule 1104 issues. Relative to the December 14, 1993 order, I allow the Defendant's item 5 and 6 claims at 5 units and 2 units per hour respectively. Relative to the March 18, 1994 order, I allow the Defendant's item 5 and 6 claims as presented at 6 units and 3 units per hour respectively. Relative to the January 17, 1997 order, I agree that it was prudent for Plaintiffs' counsel to have prepared as if there would be a full airing of the Rule 419 issues: I allow the item 5 claim as presented at 6 units. However, my understanding from the submissions before me is that some time was spent on January 17, 1994, trying to explain to the Court what had happened to cause the confusion. My initial inclination was to allow 1 unit per hour for item 6, but I note the importance of these issues to the Plaintiffs and the presence of senior counsel on their behalf. In the circumstances, I allow 2 units per hour.
[24] As for the hotel charge in issue for the Defendant, I will apply my conclusions concerning discretion in Grace M. Carlile v. Her Majesty the Queen (1997), 97 D.T.C. 5284 at 5287 and the sentiment of Lord Justice Russell in Re Eastwood (deceased) (1974) 3 All. E.R. 603 at 608, that assessment of costs is "rough justice, in the sense of being compounded of much sensible approximation", in sorting out a reasonable result for costs. Notwithstanding my comments on fees, I do not think a special working area in counsel's hotel room was necessary for this interlocutory event. The affidavit of Mary Mutchler sworn October 4, 2001, does not address this charge. Counsel may not have had access to programs comparable to government or corporate discounts. I allow $120.00. For the Plaintiffs' two disbursements in issue, I allow $50.00 and $45.00 respectively for photocopies and facsimiles.
Item 5: Plaintiffs' preparation for the Defendant's motion dated August 20, 1997, to amend its Statement of Defence (T-3016-92): allowed on September 8, 1997, with costs to the Plaintiffs in any event of the cause and with any further costs which are a direct consequence of the late amendment to be reserved to the trial judge, 6 units claimed (3 - 7)
Item 6: Appearance, 3 units claimed (1 - 3)
[25] The Plaintiffs agreed that this was a procedural pleadings motion, but noted it was brought late in these proceedings. The Plaintiffs sought costs thrown away, but that issue was reserved to the trial judge (two subsequent orders dated November 17, 1997, dismissing the Plaintiffs' motion to strike the amended pleading and allowing the Defendant's motion for an extension of time to file the amended pleadings, each provided for submissions on costs thrown away, after delivery of judgment, as a result of these amendments). The Plaintiff conceded that items 5 and 6 could be reduced to 4 or 5 units and 1 or 2 units per hour respectively.
[26] The Defendant noted that this was a straightforward motion, requiring only 35 minutes and not the one hour claimed, to particularize its position regarding the Plaintiffs' lack of standing to pursue copyright infringement. Junior counsel appearing for the Plaintiffs had only to respond to argument, but not to lead any argument. The issue of costs thrown away should not be a factor favouring the Plaintiffs because the trial judge ultimately ruled against them on that issue. The Defendant suggested 3 units and 1 unit per hour for items 5 and 6 respectively.
[27] Counsel agreed on figures for all associated disbursements except $56.51 and $66.70 respectively for telephone/facsimile and binding. The Plaintiffs conceded that some of the $56.51 could relate to other matters and suggested $20.00. The Plaintiffs argued that binding should be treated the same as photocopies, ie. a service purchased from a disinterested third party supplier. The Defendant suggested $10.00 for telephone/facsimile given that couriers were also claimed and asserted that nothing should be assessed for binding because it is overhead for a law firm.
ASSESSMENT
[28] I allowed 4 units for item 5. It appears from the Court's order that some progress additional to an amendment of pleadings was achieved on September 8, 1997. The opposing affidavits for this motion addressed some discovery issues and the order included a timetable further to some of that evidence. I allow 2 units per hour for item 6. I routinely approve binding as proposed by the Plaintiffs, ie. a service purchased from a disinterested third party supplier. I allow $20.00 and $35.00 respectively for telephone/facsimile and binding.
Item 7: Defendant's affidavit of documents (Jeffrey Casselman) sworn March 30, 1995 (T-3016-92), 4 units claimed (2 - 5)
Item 7: Plaintiffs' affidavit of documents (Eugene P. Willimon) sworn January 12, 1995 (T-3016-92: Milliken Industries of Canada Ltd.) (supplementary affidavit sworn August 30, 1995), 5 units claimed (2 - 5)
[29] Counsel for both sides agreed to leave the 83% apportionment (calculated as a function of the number of documents attributable to the main claim as opposed to the counterclaim) as is in the Defendant's bill of costs for the fees and disbursements associated with this item only. The parties agreed before me that I should apply 33% apportionment to the affidavit of Milliken Industries of Canada Ltd. (hereafter "Milliken Canada"), and allow the same number of units for each side's affidavit. The Defendant argued that a mid-range value of 4 units is appropriate. The Plaintiffs noted that some of the documents were straightforward correspondence and that some addressed the counterclaim and suggested 2 or 3 units for the Defendant.
ASSESSMENT
[30] I have read the various affidavits of documents in the court files. I allow 3 units each for these two affidavits.
Item 7: Defendant's affidavit of documents (Jeffrey Casselman) sworn August 24, 1995 + supplementary affidavit of documents (Jeffrey Casselman) sworn October 11, 1995 (T-1212-95), 4 units claimed (2 - 5)
[31] The Defendant argued against a mechanical division of costs among three causes of action because each cause was not necessarily equivalent to one another. The counterclaim and the industrial design causes of action were simply footnotes to the copyright cause of action and were not factors in the Plaintiffs' assertion of copyright infringement representing serious interference with the Defendant's right to do business. The Defendant claimed 95% apportionment of fees and disbursements to the copyright cause of action because these documents dated prior to 1995 and were therefore irrelevant to the industrial design cause of action. Most related to the main copyright issues. Therefore, the Plaintiffs' proposed apportionment below of 47.5% is inappropriate because proceedings are being assessed as opposed to causes of action. The Defendant argued that the mid-range claim of 4 units for two affidavits at a key point in the proceeding is appropriate.
[32] The Plaintiffs argued that some of these documents address both industrial design and copyright causes of action and that the Defendant would not have produced them in T-1212-95 unless they were relevant to both causes. Since one document addresses only industrial design and the remaining 19 documents address both industrial design and copyright equally, the apportionment should be 47.5 % for both fees and disbursements. Relative to mechanical division among causes of action, the Plaintiffs noted that documents 11-20 in the supplementary affidavit are exactly as listed for documents 14-23 in the supplementary affidavit sworn October 11, 1995 (T-3016-92) and suggested an allowance of 2 units only.
ASSESSMENT
[33] As noted above, the apportionment of costs as an approach in a bill of costs, to address work done relative to various awards of costs, is acceptable, but I must keep in mind that these awards were made independent of one another. That is, I am not necessarily bound to apply apportionment. However, it makes sense in these circumstances of possible blended application of these documents to multiple causes of action with differing results. I allow 3 units and apply the 83% apportionment used above in T-3016-92.
Item 7: Milliken's affidavit of documents (Terry Moyer) sworn August 29, 1995
(T-1212-95), 5 units claimed (2 - 5)
[34] The parties agreed before me to 2 units, but disagreed on apportionment. They agreed to a reduced total of $10.00 for disbursements not subject to apportionment. The Plaintiffs argued that three (artistic work, confirming assignment and tender document) of the six documents listed were attributable to both industrial design and copyright, one (renewal certificate) to industrial design and two (copyright registrations) to copyright meaning that 42% (2½ of six documents) apportionment should apply.
[35] The Defendant argued that the Court's judgment ultimately discounted the confirming assignment and therefore it cannot be a factor for costs. The Defendant argued that the artistic work was significant only for the copyright issues and that its value relative to industrial design was limited to registration, which is irrelevant here for costs. The Defendant conceded that the tender document related to both industrial design and copyright, but asserted that, for purposes of costs, it should be considered attributable only to copyright. Therefore, the apportionment should be one of six or 17%.
ASSESSMENT
[36] I allow 42% apportionment.
Item 8: Defendant's preparation for discovery of Defendant (Jeffrey Casselman) on
October 11, 1995 (T-3016-92 and T-1212-95), 5 units claimed (2 - 5)
Item 9: Defendant's attendance on October 11, 1995, 3 units claimed (0 - 3)
Item 8: Defendant's preparation for discovery of Milliken Canada (Jim Davidson) on October 12, 1995 (T-3016-92 and T-1212-95), 5 units claimed (2 - 5)
Item 9: Defendant's attendance on October 12, 1995, 3 units claimed (0 - 3)
Item 8: Defendant's preparation for discovery of Milliken (Robert Yates) on
October 12, 1995 (T-3016-92 and T-1212-95), 4 units claimed (2 - 5)
Item 9: Defendant's attendance on October 12, 1995, 3 units claimed (0 - 3)
Item 8: Plaintiffs' preparation for discovery of Defendant on October 11, 1995,
5 units claimed (2 - 5)
Item 8: Plaintiffs' preparation for discovery of Milliken and Milliken Canada on
October 12, 1995 (T-1212-95), 5 units claimed (2 - 5)
Item 9: Plaintiffs' attendance on October 12, 1995 (Milliken), 3 units claimed (0 - 3)
Item 9: Plaintiffs' attendance on October 12, 1995 (Milliken Canada),
3 units claimed (0 - 3)
Item 9: Plaintiffs' attendance on October 11, 1995 (Defendant) (T-1212-95),
3 units claimed (0 - 3)
[37] Counsel for both sides agreed that whatever I give for the Defendant's items 8 and 9 before apportionment, I should give for the Plaintiffs' items 8 and 9, subject to the Plaintiffs' stipulation that the item 8 allowance for Mr. Yates should be 1 unit less than for Mr. Casselman and Mr. Davidson. As well, they agreed that their apportionment arguments would apply to the fees and disbursements. The Defendant argued for maximum allowances because this litigation put considerable damages in issue and required senior counsel. The Plaintiffs characterized these discoveries as straightforward and argued that 2 units for each item 8 and 1 unit per hour for each item 9 would be appropriate.
[38] Counsel for both sides agreed that the October 11, 1995 transcript totalled 201 pages, that eight pages addressed general questions about witness and corporate status, that 172 pages addressed development and manufacture of the Defendant's Interface Design, that 13 pages addressed the counterclaim, that one page addressed industrial design and that seven pages addressed the alleged copyright infringing sales in T-3016-92. Of these, counsel agreed that the 13 pages and one page apply to the Plaintiffs and the seven pages apply to the Defendant.
[39] Relative to its claims of 94% and 77% (calculated as function of attributable transcript pages) apportionment for Mr. Casselman and Mr. Davidson respectively, the Defendant argued that T-1212-95 would not have been brought, but for the bringing of T-3016-92. The 1992 action addressed 95% of the sales making the 1995 action with its single sale simply a convenient addition. Paragraph [13] of the Court's reasons for order dated April 24, 1998 (addressing costs thrown away) concluded that the Plaintiffs pursued T-3016-92 despite knowing that its case was seriously flawed. The facts of one small discrete sale in 1995 are easily distinguishable from the considerable sales at issue in T-3016-92. The Defendant argued that the Plaintiffs' suggestion to split attribution of the eight pages is unfair because the underlying assumption, that T-1212-95 stood on its own, is incorrect. Alternatively, the Defendant argued that the Plaintiffs' notion of separate discoveries for each of three causes of action is faulty given that there were at least six causes of action: (i) 1991 sales re copyright, (ii) 1992 sales re copyright, (iii) late 1992 sales re copyright, (iv) counterclaim, (v) 1995 sale re copyright, and (vi) 1995 sale re industrial design. Using the Plaintiffs' approach, the Defendant gets four of six causes of action and therefore 67% of the eight pages of transcript are attributable to its costs.
[40] The Defendant argued that fundamental differences between copyright and industrial design law mean that the copyright and industrial design proceedings, and their associated costs, were completely severable, in turn meaning that the 172 and eight pages are all attributable to the Defendant's costs for the copyright proceedings. That is, in copyright law, unlike industrial design law, given that the Defendant was acting as a function of instructions from the Calgary Airport, its defence was that the allegedly offending design was created independently. Therefore, the Plaintiffs required these 180 pages to determine how the Defendant arrived at its design in order to determine whether there was copyright infringement. By contrast, alleged copying of a design is not a material element of proof for industrial design infringement. Rather, the Plaintiffs needed to compare what was registered with what was sold and therefore would not have been interested in the genesis of the Defendant's design. In summary for October 11, 1995 (discovery of Mr. Casselman), the Defendant argued that 187 of 201 pages of discovery transcript or four of six causes of action were attributable to its costs. This litigation represented potentially considerable damages and required senior counsel.
[41] Counsel for both sides agreed for October 12, 1995 (Mr. Yates: 76% apportionment claimed by the Defendant) that the discovery transcript totalled 53 pages, that three pages addressed copyright and were attributable to the Defendant's costs, that 19 pages addressed industrial design and were attributable to the Plaintiffs' costs, that six pages addressed general questions and that 25 pages addressed the title issue in copyright relative to the Plaintiffs' Mangrove Design, but disagreed about their relevance for industrial design. The Defendant noted that item 8 for Mr. Yates was claimed at 4 units only because the examinations of the other two persons were longer and more detailed.
[42] The Defendant applied its apportionment argument above to the six pages, ie. either 100% or _ as a function of four of six causes of action. Relative to the 25 pages, the Defendant noted the trial judge's reasons, 83 C.P.R. (3d) 470 at 481-484, addressing Milliken's difficulty in proving its case. Specifically, Milliken failed to explain why it did not advance available evidence validating its standing to pursue copyright infringement, thereby leaving it open to the trial judge to draw an adverse inference. This evidence was not available at the time of discovery. The Defendant argued that these 25 pages must therefore be attributable to the Mangrove Design copyright issues. The alternative position, ie. _ apportionment, is not applicable here because these discovery pages addressed only title. The references (pages 16 and 33 of the transcript) to industrial design are inconsequential clarifications in a series of pages addressing copyright title. The discovery transcript (page 34, Q. 110) indicates that industrial design was not an issue prior to September 1, 1992. These 25 pages, addressing copyright title, should not be attributable equally between copyright and industrial design simply as a function of the appearance of one line addressing industrial design. The trial judge's reasons outline details of the genesis of the Mangrove Design, which were relevant for copyright law, but irrelevant for industrial design law.
[43] The Plaintiffs argued, relative to eight of 201 pages (October 11, 1995 discovery of Mr. Casselman) that these combined proceedings consisted of three distinct causes of action, ie. copyright, counterclaim and industrial design, each with their own set of costs. The Defendant's interpretation of the Court's decision concerning costs thrown away is irrelevant here. If the Defendant had not delayed, until just prior to trial, in dropping two causes of action, there would not be apportionment issues. Therefore, apportionment should be a function of causes of action and of time spent. As such, these eight pages should be split equally between copyright and industrial design because their questions would have been necessary if there had only been an industrial design cause of action. The Plaintiffs disagreed with the Defendant's premise concerning the 172 and eight pages and argued that the genesis of the Defendant's design was very relevant to the industrial design action. Therefore, these pages should be split equally between the Plaintiffs' and the Defendant's costs. The Plaintiffs, in summary, asked for apportionment as a function of 104 of 201 pages relative to costs claimed by the Defendant for the discovery of Mr. Casselman. The Plaintiffs asserted that the facts of this litigation, involving few sales with few differences among them, means therefore that 2 units and 1 unit per hour respectively for all items 8 and 9 in the Plaintiffs' and the Defendant's bills of costs would be appropriate.
[44] Relative to costs claimed by the Defendant for the discovery of Mr. Davidson, the Plaintiff asserted that his discovery transcript was 226 pages, instead of the 236 pages shown in the bill of costs, consisting of 173 pages addressing