Positive Attitude Safety System Inc. v. Albian Sands Energy Inc.

Positive Attitude Safety System Inc. v. Albian Sands Energy Inc.
Court (s) Database
Federal Court Decisions
Date
2004-07-23
Neutral citation
2004 FC 1022
File numbers
T-1052-01
Notes
Digest
Decision Content
Date: 20040723
Docket: T-1052-01
Citation: 2004 FC 1022
Ottawa, Ontario, this 23rd day of July, 2004
Present: THE HONOURABLE MR. JUSTICE SIMON NOËL
BETWEEN:
POSITIVE ATTITUDE SAFETY SYSTEM INC.
JAMES S. BURNS and CLAIRE BURNS
Plaintiffs
and
ALBIAN SANDS ENERGY INC.
and
JEFF STIBBARD
Defendants
REASONS FOR ORDER AND ORDER
I. INTRODUCTION
[1] This is a motion by the defendants, Albian Sands Energy Inc. ("Albian Sands") and
Jeff Stibbard ("Mr. Stibbard"), for summary judgment pursuant to Rules 213 to 219 of the Federal Court Rules, 1998 against the plaintiffs, Positive Attitude Safety System Inc. ("PASS Inc. ") as well as James S. Burns ("Mr. Burns") and Claire Burns ("Ms. Burns") .
[2] The defendants seek a motion for an Order pursuant to Rule 216 for summary judgment dismissing:
i) the plaintiffs' claim of passing off by Albian Sands, as alleged in paragraphs 1 and 28 of the plaintiffs' Amended Statement of Claim;
ii) the plaintiffs' claim of copyright infringement based on the plaintiffs' allegation that the defendants have sold, rented out, exposed and offered for sale rental of the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials or a substantial portion of one or more of the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials, as alleged in paragraphs 1 and 27 of the plaintiffs' Amended Statement of Claim;
iii) the plaintiffs' claim of copyright infringement based on the plaintiffs' allegation that the defendants have performed or have caused Albian Sands' employees to perform substantial portions of one or more of the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials in public, as alleged in paragraphs 1 and 27(d) of the plaintiffs' Amended Statement of Claim;
iv) the plaintiffs' claim of copyright infringement with respect to each of or any of the following works:
a) ALBIAN SANDS ENVIRONMENT AND SAFETY SYSTEM (ASESS) Daily Action Form;
b) ASESS Daily Quality Check Form;
c) ASESS Daily Meeting Notes Form;
d) ASESS HSE Tool#3;
e) ASESS Barrel Discussion Charts; and
f) Albian Sands General Hazard Awareness & Recognition Handbook.
v) Such further and other Order as to this Honourable Court may seem just.
[3] The plaintiffs in response seek an Order dismissing the defendants' motion and awarding costs to the plaintiffs in any event of the cause as well as a summary judgment in their favour declaring that the defendants have infringed the plaintiffs' copyright in the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials and have contravened s. 7(b) and (c) of the Trade-marks Act, RSC 1985, c. T-13 ("TMA").
II. ISSUES
[4] According to the defendants, the main point in issue and sub-issues for determination are:
i) Whether or not there is a genuine issue for trial with respect to the plaintiffs' claims relating to Albian Sands' alleged passing off of the plaintiffs' POSITIVE ATTITUDE SAFETY SYSTEM and PASS trade-marks ("PASS trade-marks") and copyright infringement of various written materials produced by the plaintiffs ("PASS materials"), in respect of which copying or substantial copying by the defendants has been alleged.
ii) The sub-issues are essentially to determine, as stated in the defendants' Notice of Motion, whether or not the plaintiffs have any genuine issues with respect to:
a) passing off by Albian Sands;
b) the defendants having sold, rented out, exposed and offered for sale or rental the PASS Materials;
c) the defendants having performed or having caused Albian Sands' employees to perform substantial portions of one or more of the PASS Materials in public; and
d) the enumerated works being a copy or substantial copy of the PASS Materials.
[5] For the plaintiffs the points in issue to be determined are as follows:
i) Is there a genuine issue for trial in respect of the following plaintiffs' claims of:
a) passing off;
b) secondary copyright infringement under s. 27(2)(c) of the Copyright Act, R.S. 1985 c. C-42, ("CA"); and
c) copyright infringement under s. 3 and 27(2) of the CA by way of substantial reproduction of the PASS Material.
[6] However, having reviewed some of the jurisprudence regarding motions for summary judgment and to assist in comprehension, I am of the opinion that, for the purposes of this motion, the issues as submitted by the parties should essentially be considered as the following single general issue: is there a genuine issue to be tried with respect to the parties' submissions in this motion? If this question is answered in the affirmative and consequently there is a genuine issue to be tried, it will become necessary for the Court to determine whether there is sufficient evidence to decide the questions of fact and law raised by the defendants' motion. If this question is answered in the negative and there are no genuine issues to be tried, then a summary judgment will be granted.
III. FACTS
[7] The facts will be presented in the following sequence:
A. Facts agreed on by both parties;
B. Facts in dispute; and
C. Underlying facts.
A. Facts agreed on by both parties:
[8] Both parties agree that:
i) PASS Inc. is in the business of consulting to heavy industries in the area of worker and employee safety. As such it licences its clients to use a safety system for enhancing workplace safety which includes supporting materials such as safety manuals and handbooks, flow charts and guides, reporting and assessment components and shift charts;
ii) PASS Inc. calls this system and supporting materials the POSITIVE ATTITUDE SAFETY SYSTEM and PASS;
iii) BHP Diamonds Inc. ("BHP Diamonds") is a subsidiary of BHP World Minerals (BHP World) and operates the Ekati Mine Site in the Northwest Territories, Canada;
iv) in June 1997, Mr. Stibbard, the BHP Diamonds' Mine Manager at the Ekati Diamond Mine near Yellowknife, toured BHP World's Cannington Mine in Australia and was exposed to its POSITIVE ATTITUDE SAFETY SYSTEM and PASS safety system and materials;
v) in 1997 a PASS handbook utilised at the Cannington Mine was left with Mr. Stibbard at the Ekati mine;
vi) in 1997/1998, Mr. Stibbard implemented PASS materials at the Ekati mine with a modified version of the Cannington PASS Handbook;
vii) in November 1998, Mr. Stibbard was seconded to the Muskeg River Project, a joint venture of BHP Diamonds and Shell Canada that was engaged in the extraction of oil from tar sands;
viii) in about January 1999, Mr. Stibbard implemented PASS at the Muskeg River Project using copies of handbooks from the Ekati mine;
ix) in April 1999, BHP Diamonds announced that they were intending to pull out of the Muskeg River Project in September, 1999;
x) in September 1999, Mr. Stibbard became a Western Oil Sands employee; and
xi) in October 1999, Albian Sands, a joint venture including partners Shell Canada, Western Oil Sands and Chevron Canada, continued the development of the Muskeg River Project, and continued to use the safety system there in place.
B. Facts in dispute:
[9] However, the parties do not agree on whether or not:
i) PASS Australia licensed BHP World, to use PASS Inc.'s POSITIVE ATTITUDE SAFETY SYSTEM and PASS safety system at its Cannington mine in Australia with the provision that BHP World could use without restriction any materials developed or created during the course of the project;
ii) on January 29th, 1998, PASS Inc. licensed BHP Diamonds to use its POSITIVE ATTITUDE SAFETY SYSTEM (PASS) as well as the materials at all locations throughout Canada (although the agreement was co-signed on March 3rd, 1999) and, that in doing so, PASS Inc. gave BHP Diamonds the right to reproduce and modify any materials provided relating to their system or process for use at all BHP Diamond's locations;
iii) from October to November 1999, Albian Sands continued to use the materials and the safety system as well as distribute the PASS materials at the Muskeg River site without a license;
iv) in November 1999, Mr. Stibbard and others working at Albian Sands created and wrote the ALBIAN SANDS ENVIRONMENT AND SAFETY SYSTEM (ASESS), a new safety system to replace the one initially implemented by Mr. Stibbard for use at the project;
v) upon introduction of ASESS in November 1999, all reference to POSITIVE ATTITUDE SAFETY SYSTEM as well as PASS was discontinued and only ASESS was used at the project;
vi) in March 2000, John Currie ("Mr. Currie"), who was a safety manager with a contractor at Albian Sands named KMC and was familiar with PASS, was introduced to ASESS and is told it is approved by PASS. He found ASESS so similar to PASS that he thought it was PASS;
vii) in June 2000, John Currie contacted Mr. Burns, who first wrote the PASS materials with his wife in 1992, and provided him with ASESS materials. The action was commenced after which the defendants destroyed the remaining PASS materials in their possession; and
viii) the defendants have never commercially exploited ASESS.
C. Underlying facts:
[10] In order to understand the intricacies of the issues raised by the present motion, it is important to understand the following underlying facts.
i) The parties;
ii) The PASS system; and
iii) The ASESS system.
I) The Parties:
[11] Mr. Burns is a safety consultant who has had an interest in safety programs since 1982. Mr. Burns has a university degree in psychology and his post-graduate work was in counselling psychology. He, along with his wife (the other plaintiff in this matter) Ms. Burns, wrote a book and had was published in April 1992. The topic of the book was the "Positive Attitude Safety Systems" ("Pass System"). The "PASS" acronym became a non-registered trade mark and the PASS System was given a registered literary copyright on March 10th, 1994. The PASS System was developed over a period of several years.
[12] The corporate plaintiff, PASS Inc. was incorporated in 1993 and Mr. and Ms. Burns became employees of the corporate entity by agreement dated December 15th, 1993. An assignment of all the rights in the PASS System was given to PASS Inc. At that time, the PASS System was implemented with clients with the signing of a license agreement for use and reproduction of the PASS System for a fee based on the number of employees, and a defined rate for implementation and verification of the System. PASS Inc. operates in Australia, Canada and New Zealand.
[13] The defendant Mr. Stibbard, who is now self employed (as of March 8th, 2004), was the General Manager for Safety and Mine Operations for BHP Diamonds and for the corporate defendant's leadership team. In 1997, Mr. Stibbard became aware of the PASS System and received a copy of the handbook in the months following his employment at the BHP Diamond Ekati Mine located in Yellowknife. In late 1998 or early 1999, Mr. Stibbard developed a safety system which "basically" replicated the PASS System (see cross-examination of Mr. Stibbard dated March 8th, 2004, page 9, lines 39 to 40). This replica of the PASS System was used under the name BHP/Ekati PASS handbook without a license and with the copyright markings removed. In November 1998, Mr. Stibbard was seconded to another project in which BHP Diamonds had a 25% interest in Fort McMurray, Alberta. In January 1999, Mr. Stibbard distributed the BHP/Ekati PASS handbook to employees and contractors. Whether or not a license to use and distribute the PASS System was in existence for the Muskeg River Project is being disputed by the parties.
[14] In October 1999, Albian Sands became the operating entity of the Muskeg River project which included a joint venture between Shell Canada, Western Oil Sands and Chevron Canada and, as previously mentioned, Mr. Stibbard was the corporate defendant's General Manager for Safety and Mine Operations. For a period of more than two months, Mr. Stibbard and Albian Sands photocopied and distributed the BHP/Ekati PASS handbook, as they had done previously, to employees and contractors such as KMC, Fluor Daniel, North American Construction, The Fort MacKay Group and Cross Contracting. Fluor Daniel did not utilize the PASS system, but the other contractors did. No license that was specific to this site was granted by PASS Inc. to authorize the implementation and use of the PASS system.
[15] Furthermore, the corporate defendant allegedly created another safety program because it did not want to pay for use of the PASS System and because it had been served with the statement of claim in these proceedings, which created legal issues for them (see cross-examination of Mr. Stibbard dated March 8th, 2004 at para. 19, lines 11 to 17; and page 22, lines 8 to 16). According to the corporate defendant, Mr. Stibbard and Albian Sands produced ASESS in less than a month with the collaboration of some employees, which they used to "replace" the PASS System. Mr. Stibbard admitted during his cross-examination that he had kept the PASS System material in front of him while he drafted ASESS.
ii) The PASS system:
[16] The PASS System puts emphasis on a positive management approach that seeks to elicit positive feedback on safety performance. While other, more traditional safety systems exist, such as the International Loss Control Institute ("ILCI"), the PASS System is basically worker-driven in that it gets miners to discuss their situations among themselves with a supervisor present and by having the employees asking questions. It is a totally different concept from that of the traditional "top down" safety programs. It is a "bottom-up" safety program where management eventually gets involved instead of initiating the system. The PASS System works because it is employee driven and not management imposed (see cross-examination of Mr. Currie dated April 5th, 2004, page 19 and 28 - Mr. Currie was a Safety and Human Resources Coordinator for a mining contractor involved in the Albian Sands Project).
[17] All of the key PASS System tools are encompassed in a handbook which is a distillation of the overall system and which has the advantage of being easy for employees to consult. The PASS System includes among other items: a PASS safe day chart, a PASS report down safety chart, a PASS safety improvement white board and a PASS safety discussion flow chart. In Mr. Burns's opinion the safety flow chart, which establishes a series of questions for the "safety huddle", the safe day chart and the safety improvement white board are the key control components of the PASS system.
iii) The ASESS system:
[18] The ASESS System is a daily qualitative review process in which the philosophical concept is that safety is about behaviour. This system relies on morning employee "huddles", where questions are asked by employees and charts or white boards are relied upon. It is the defendants' position that the forms, which make up the ASESS System and include the ASESS daily action form, ASESS daily quality check form, ASESS daily meeting notes form, ASESS H.S.E. Tool #3, ASESS barrel discussion charts, as well as the Albian Sands General Hazard and awareness and recognition handbook, are not substantially similar to the charts, white boards and handbook which make up the PASS System. The defendants further claim that there are similarities, but they are not such that ASESS could be considered a mere replicate of the PASS System.
[19] Having said that, Mr. Currie, who is knowledgeable in mining safety systems, was on site when the ASESS System was distributed to Albian Sands' employees and contractors. Under cross-examination, he stated his opinion that ASESS was similar to the PASS System, but that it had a different name. When looking at the ASESS material and the charts and boards on the wall and how the meetings (huddles) were conducted, he first thought that it was the PASS System but bearing the name ASESS, but then realised that some questions asked were in fact different. He noted that the spin given to questions under the PASS System was of a positive nature, while the similar questions asked under ASESS had a negative tone. However, overall, he felt that in essence the PASS System was being reproduced by the defendants. During the same cross-examination, Mr. Currie said that he had mentioned to Mr. Stibbard and Mr. Brown (an Albian Sands' employee) that the ASESS System looked like the PASS System upon which he was told that it was correct for Albian Sands to use " ... this system" (see cross-examination, Mr. Currie, page 20).
[20] Also during cross-examination, Mr. Currie said that his employer ("KMC") discussed the possibility of using the ASESS System at all of their work sites but, because of the resemblance to the PASS system, they had concerns about copyright issues which the employer felt he should investigate further and report back to the management of his company. Subsequently, in the Fall of 2002, KMC implemented the PASS System at two Canadian projects.
IV. LAW AND JURISPRUDENCE
a) law and jurisprudence on summary judgment
[21] In two recent decisions (MacNeil Estate v. Canada (Indian and Northern Affairs
Department), [2004] FCA 50 and Trojan Technologies Inc. v. Suntec Environmental Inc.,[2004] FCA 140), the Federal Court of Appeal seems to have clarified the motion judge's role when dealing with summary judgment and has made it a point to specify that if ever credibility was at stake, the matter had to be referred to a trial judge who would be in a better position to make a final determination. But what appears to be new ground on the part of the Court of Appeal is the concern that motion judges would not know if they had all the evidence or "sufficient evidence" in order to conclude and make a final determination once there is a finding on whether the issue is genuine because, even though the responding party on summary judgment had to put their "best foot forward", there is no obligation for them to present sufficient evidence to permit a final determination. (See MacNeil, supra at paragraphs 36, 37). These decisions also make the point that the form of evidence available at motion trials may be different than at trial and the trial judge is in the best position to render a final decision (See MacNeil, supra at paragraph 38).
[22] In Suntec Environmental Inc., supra at paragraph 19, Pelletier JA for the Court of Appeal noted that there was an ambiguity created by Rule 216(3) once a conclusion on the genuine issue was made, thus creating the possibility for the matter not to proceed to trial or the rendering of a decision if the facts permitted, based solely on affidavit evidence. Such was also the concern of Rouleau J. in Radil Bros. Fishing Co. c. Canada (ministère des Pêches et des Océans) (1998), 158 F.T.R. 313.
[23] Having said that, I think that it is important that the jurisprudence on summary judgment be reviewed such as it is set out in Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (F.C.T.D.), and affirmed by the Federal Court of Appeal's decision in ITV Technologies Inc. v. WIC Television Ltd., 2001 FCA 11, where Justice Tremblay-Lamer J. reviewed the jurisprudence in a very practical way and categorized the general principles applicable to a motion for summary judgment at paragraph 8:
"I have considered all of the case law pertaining to summary judgment and I summarize the general principles accordingly:
1. the purpose of the provisions is to allow the Court to summarily dispense with cases which ought not proceed to trial because there is no genuine issue to be tried (Old Fish Market Restaurants Ltd. v. 1000357 Ontario Inc. et al., [1994] F.C.J. No. 1631, 58 C.P.R. (3rd) 221 (T.D.));
2. there is no determinative test [...] but Stone J.A. seems to have adopted the reasons of Henry J. in Pizza Pizza Ltd. v. Gillespie [(1990), 75 O.R. (2nd) 225 (Gen. Div.)]:
It is not whether a party cannot possibly succeed at trial, it is whether the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial;
3. each case should be interpreted in reference to its own contextual framework [...];
4. provincial practice rules (especially Rule 20 of the Ontario Rules of Civil Procedure, [R.R.O. 1990, Reg. 194]) can aid in interpretation [...];
5. this Court may determine questions of fact and law on the motion for summary judgment if this can be done on the material before the Court [...];
6. on the whole of the evidence, summary judgment cannot be granted if the necessary facts cannot be found or if it would be unjust to do so [...];
7. in the case of a serious issue with respect to credibility, the case should go to trial because the parties should be cross-examined before the trial judge [...] The mere existence of apparent conflict in the evidence does not preclude summary judgment; the court should take a "hard look" at the merits and decide if there are issues of credibility to be resolved.
[24] In Radil Bros. Fishing Co. Ltd. c. Sa Majesté La Reine, supra at paragraphs 14 and 15, Rouleau J. explained that in a summary judgment motion, as long as a real triable question exists in relation to essential facts, the strength or weakness of a claim or a defence does not have to be taken in consideration:
The purpose of the summary judgment provisions in the Federal Court Rules is to allow the Court to summarily dispense with those cases which it considers ought not to proceed to trial because there is no genuine factual dispute between the parties. It is a determination to be made on the particular circumstances of each case and on the law and the facts submitted in support of the claim or defence.
A motion for summary judgment is not intended, and should not be treated, as a substitute for a trial. In determining whether a trial is unnecessary and would serve no purpose, a motions judge has a restricted function and must guard against assuming the role of a trial judge and deciding the issues between the parties. Provided a genuine issue exists with respect to the material facts, it matters not how weak or strong the impugned claim or defence may be. The case should proceed to trial in order that the issue may be resolved by the trial judge. Accordingly, summary judgment should only be granted in the clearest of cases.
As mentioned by Rouleau J., when granting a summary judgment, a judge must do so as long as it appears evident to him that such a conclusion is clear from the situation presented to him in law and in fact.
[25] Furthermore, I note the wisdom of Rouleau J. when he says that a summary judgment motion should not be a replacement for a trial, or a summary trial. The main purpose of summary judgment is that the motion should be granted in clear cases where all facts and the law are known and presented by the parties.
[26] Taking into consideration what the jurisprudence establishes as a guide, the motions judge must have available all the necessary components to render a qualitative judgment. It would be unfair for the judge in a matter to be asked to render justice without first having a complete picture of all the relevant facts and law before him. This is what is meant by the jurisprudence when it directs a summary judgment motion judge to take a "hard look" before deciding. The motion judge in this case must take that "hard look" before deciding on a particular issue and must do so having all the factual elements and substantive legal material at his disposal. To do otherwise would not be in the interest of justice and would most probably be prejudicial to one or both sides involved.
b) Law and jurisprudence on relevant trade marks legislation
[27] As was decided in Kabushiki Kaisha Edwin v. SDB Design Group Inc (1986), 9 CPR (3d) 465 (FCTD), it is not essential to register in order to acquire rights in a trade-mark so as to preclude others from using the same or a confusing trade-mark. A person who uses a mark, regardless of registration, has the right to prevent the subsequent use of a confusing trade-mark by another but only in the same trading area.
c) Law and jurisprudence on passing off
[28] Sections 7(b) and (c) of the TMA read as follows:
"UNFAIR COMPETITION AND PROHIBITED MARKS
Prohibitions
7. No person shall
[...]
(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another,
(c) pass off other wares or services as and for those ordered or requested;
[29] As decided in Kirkbi AG v Ritvik Holdings Inc. (2003), 26 CPR (4th) 1 at para. 38 (FCA), the Federal Court of Appeal has stated that section 7(b) is the equivalent statutory expression of the common law tort of passing off with one exception: in order to use section 7(b) a person must prove that they have a valid and enforceable trade-mark, whether registered or unregistered. Section 7(b) does incorporate criteria specific to trade-marks otherwise governed by the Act, such as by subsection 6(2). Furthermore, as was decided in Procter & Gamble Pharmaceuticals In.c v. Novopharm Ltd (1996), 68 CPR (3d) 461 at 466 (FCTD); Horn Abbot Ltd. v. Thurston Hayes Developments Ltd (1997), 77 CPR (3d) 10 at 17 (FCTD); and Top-Notch Construction Ltd. v. Top-Notch Oilfield Services Ltd. (2001), 13 CPR (4th) 515 at para. 36 (FCTD) in order to come under section 7(b) a plaintiff must meet all of the following three tests:
i) a conduct test: "direct public attention to [the defendant's] wares";
ii) a confusion test: "in such a way as to cause or be likely to cause confusion in Canada", and
iii) a timing test: "at the time [the defendant] commenced so to direct attention to them".
[30] Section 7(c) of the Trade-marks Act is the statutory expression of the common law tort of passing off and prohibits a person from passing off other wares or services as and for those ordered or requested.
d) Law and jurisprudence on copyright infringement
[31] With regards to copyright infringement under sections 3 and 27(2) as well as secondary infringement under s. 27(2)(c) of the CA:
[32] Sections 3 of the CA reads as follows:
COPYRIGHT
Copyright in works
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, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right
(a) to produce, reproduce, perform or publish any translation of the work,
[...]
[33] Sections 27(1) and (2) of the CA read as follows:
27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.
Secondary infringement
(2) It is an infringement of copyright for any person to
(a) sell or rent out,
(b) distribute to such an extent as to affect prejudicially the owner of the copyright,
c) by way of trade distribute, expose or offer for sale or rental, or exhibit in public,
(d) possess for the purpose of doing anything referred to in paragraphs (a) to (c), or
(e) import into Canada for the purpose of doing anything referred to in paragraphs (a) to (c), a copy of a work, sound recording or fixation of a performer's performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it.
[34] Therefore in accordance with the CA, it is an infringement of copyright for any person to do, without the consent of the copyright owner, anything that only the owner of the copyright has the right to do. Pursuant to sections 3 and 27(1) of the CA, where consent of the owner is given expressly or by clear implication, there is no copyright infringement. To determine whether or not there has been infringement or secondary infringement thus requires a determination of the facts in accordance with the law and, in this case, they are clearly in dispute.
[35] Furthermore, it is also a principle of copyright law that the work must be an original production and, as set out in Inhesion Industrial Co. v. Anglo Canadian Mercantile Co. (2000), 6 CPR (4th) 362 (FCTD), the presumption that copyright subsists, as afforded by sub-section 34.1 of the CA, implies that originality is also presumed. "Originality" implies that the work is not a replica, rather, that it has been independently produced and that it is not, in essence, a mere copy of existing material. The test to determine originality is as set out in Kilvington Bros Ltd. v. Goldberg (1957), 28 C.P.R. 13 (Ont. HC); Hay and Hay Construction Co. Ltd. v. Sloan et al., [1957] 12 CPR 132 at 448; cf. Goldner v. Canadian Broadcasting Corp. (1972), 7 CPR (2d) 158 at 162 (FCTD); Grignon v. Roussel (1991), 38 CPR (3d) 4 at 7 (FCTD); and is aimed at determining whether work is original in the sense that it is substantially different from other works and that it originated from the author.
V. SUBMISSIONS
a) The defendants' submissions (the moving party)
[36] It is the defendants' position that paragraph 7(b) of the TMA - prohibitions - cannot apply to the present factual situation since :
- Albian Sands, being in the oil extraction business is not, as is the case of the plaintiffs, in the safety system business and, since section 7 comes under the heading "unfair competition", Albian Sands is not a competitor or even a potential competitor;
- Albian Sands does not trade in safety systems and materials in such a way as to create confusion as mentioned in paragraph 7(b) of the TMA, nor as defined by the interaction of both sections 6 and 4 of the TMA, because the use was exclusively internal to its organization;
- Albian Sands submits that there is a valid agreement which, through BHP Diamonds, gives them the right to use and modify the PASS System, but that since these are issues that have to be settled between PASS Inc. and BHP Diamonds and because of certain licensing agreements, the Federal Court would not have the jurisdiction to resolve these issues as they are not related to a cause of action under paragraph 7(b) of the TMA.
[37] On the plaintiffs' alleged prohibition contained at paragraph 7(c) of the TMA against the defendants, the defendants submit that, for the following reasons, no genuine issue of passing off is created :
- Although Albian Sands admits to having used the PASS and Positive Attitude Safety System trade-marks in October and November 1999, the defendants are not in the business of marketing safety systems and;
- Albian did not advertise, offer for sale nor sell Safety Systems to anyone. Therefore, the passing off prohibition contained at paragraph 7(c) of the TMA cannot have application in this matter.
The defendants did not supply any references to support their arguments.
[38] Furthermore, the defendants claim that no genuine issues have been raised in the Amended Statement of Claim when the plaintiffs allege the following :
- both defendants have infringed the PASS Inc. copyright in the PASS System by producing and reproducing the PASS materials, without authorization, as well as by performing and causing employees to perform substantial portions of the PASS material procedures, by selling, renting out, by way of trade distributing, exposing or offering for sale or rental, and exhibiting in public the PASS materials or some substantial portion of it, by distributing copies of the PASS materials or substantial portion of it and by doing so, affecting PASS Inc. in a prejudicial way contrary to sections 27 and 3 of the CA;
- both defendants, without due authorization, reproduced and/or modified the PASS System in such a way as to reproduce a substantial portion of the PASS System, which they then called ASESS, for their use and the use of others contrary to sections 27 and 3 of the CA.
[39] The defendants take the position that the allegations regarding sections 27 and 3 of the CA do not apply to the factual situation in the present proceedings because:
- there is no evidence that the defendants have sold, rented out or exposed and offered for sale or rental the PASS Systems or a substantial portion of it;
- there is no evidence of "performance," as defined in section 2 of the CA by the defendants, or by their employees as outlined in sections 2 and 27 of the CA;
- there is no evidence that the defendants have reproduced a substantial portion of the PASS Systems in the ASESS System.
b) The plaintiffs' submissions
[40] The plaintiffs respond to the defendants' arguments in their submissions by claiming that a prohibition under paragraph 7(b) of the TMA relates to passing off, that the evidence does in fact establish a passing off case, that there was a reproduction of PASS by photocopying it or modifying it in a summary way, that ASESS is a copy of PASS, and that such behaviour is a breach of the CA. It should be noted that the plaintiffs did not respond specifically to the section 7(c) arguments.
VI. Analysis
a) The trade marks "PASS" and "Positive Attitude Safety System" in association with safety systems (the trade mark analysis)
[41] The plaintiffs claim a right to two unregistered trade-marks, namely PASS and Positive Attitude Safety System, in association with their products and services in Canada as well as worldwide. For the plaintiffs, the public recognizes these trade-marks as distinguishing PASS Inc.'s safety system and consulting services from others and it is therefore their position that, by instrumenting ASESS, which they consider to be a replica of the PASS System, the defendants have created confusion which adversely affects their PASS products and services.
[42] The defendants acknowledge having used the PASS trade-marks and the supporting material, but claim to have only done so for a very short time period (October to November 1999). They also admit to having distributed the material to employees and contractors.
[43] It should also be noted that through their submissions, the defendants did not propose that the unregistered marks PASS and Positive Attitude Safety System were not trade-marks in association with safety systems and services in accordance with the TMA.
[44] Furthermore, as previously noted the defendants admit having used the PASS and Positive Attitude Safety System trade-marks during the months of October and November 1999 exclusively within their organisation when Mr. Stibbard photocopied and distributed the BHP/Ekati PASS Handbook, which was an almost identical replica of the PASS System, to Albian Sands' employees and contractors without copyright notices. This is clearly a factual admission of use of the trade-marks subject to a determination on whether or not a license was in effect which would permit such usage.
[45] The evidence also indicates the possibility that the ASESS System was in reality the PASS System and if it is in fact the case, it can be argued that such a situation would place the defendants in contravention of paragraph 7(b) of the TMA.
[46] Keeping all this in mind and the fact that a motion judge's primary role at first is not to resolve issues of fact, but to determine whether a genuine issue for trial exists, I conclude that there is a genuine issue arising from the prohibition contained in paragraph 7(b) of the TMA that concerns the facts of this case and the law. Secondly, having taken a hard look at the parties' submissions, the affidavits, the cross-examinations and the respective documentary evidence, I am of the opinion (my comments being directed to both sides in this matter) that I do not have the benefit of having received all of the necessary factual evidence, nor the arguments in law to properly respond to this genuine issue and therefore believe that a trial judge will be in a better position to decide.
[47] As I have already mentioned and notwithstanding the incontestably different nature of each of the parties' "trade", when considering the general issue addressed in paragraph 7(c) of the TMA, the question of "same trade" or "being in the same business of" could nonetheless be applicable to these facts. While I make no final conclusion on this issue, I note that the defendants, by having distributed the PASS "wares" and later by having "created" their own safety system - ASESS - which was also distributed to employees and outside contractors involved in the mining industry, such an activity might be included in the concept of business marketing.
[48] In any event I do conclude, when contemplating the possibility of a prohibition as contained in paragraph 7(c) of the TMA, that the facts as admitted are such that a genuine issue does exist and, that being said, the Court notes again that the parties have not presented submissions in fact or in law that would permit a determination on this issue. Again, I find that in the case of this genuine issue, a trial judge will be in a better position to make a determination.
[49] Based on the aforementioned and having carefully reviewed the pertinent sections of the legislation, I am of the opinion that paragraph 7(c) of the TMA constitutes a legislative prohibition of the common law tort of "passing off" and that conversely under paragraph 7(b), the prohibition addresses the use of wares in such a way as to create confusion with the wares of the trade-mark holder. However, it is unclear whether this is what the plaintiffs are claiming when they submit, at paragraph 29 of their memorandum, that Albian Sands misrepresented that ASESS was approved by PASS Inc. to Mr. Currie as well as to companies like KMC, and that such misrepresentation caused confusion that would create damage through loss of customers and that by doing so, Albian Sands has replaced the trade-marks PASS with the name ASESS.
[50] Because this is a motion for summary judgment, I do not have the benefit of having the plaintiffs' response to Albian Sands' arguments that it was not in competition with PASS Inc. and that it did not "trade" in safety systems or safety materials, and therefore no "confusion" could be created, especially when the use as factually admitted to was exclusively internal to the Albian Sands organisation, its employees and contractors.
[51] I do not think that the arguments presented by Albian Sands lead to a clearly "black or white conclusion". For example, P.A. Côté in The Interpretation of Legislation in Canada at page 64 when he cites Lord Sumner in United Buildings Corporation v. City of Vancouver Corporation, [1915] A.C. 345, 351, outlines that statutory interpretation requires that the weight afforded to paragraph headings and titles varies with the circumstances:
That the titles, which a statute prefixes to parts of the Act, may be looked at as aids in the interpretation of the language of such parts is well settled, but the assistance to be derived from such consideration varies considerably.
Thus, according to the rules of statutory interpretation, the title of legislation or paragraph headings contained therein are not in and of themselves determinative elements to consider when seeking to determine legislative intent. One must look at the statutory text itself and interpret it by relying on the definitions as well as the textual meaning. A title, along with other references, can be used for interpretation purposes, but not necessarily in a determinative way.
Therefore, the argument that Albian Sands is not a competitor per se is debatable.
[52] Again, in this same vein, the argument that Albian Sands is not in the "trade" of safety systems and materials (based on the interaction of sections 7(b), 6 and 4 of the TMA) raises the following question: why then did it produce the ASESS System? Was the ASESS System consid