Andrews v. McHale

Andrews v. McHale
Court (s) Database
Federal Court Decisions
Date
2016-06-03
Neutral citation
2016 FC 624
File numbers
T-832-15
Decision Content
Date: 20160603
Docket: T-832-15
Citation: 2016 FC 624
Ottawa, Ontario, June 3, 2016
PRESENT: The Honourable Mr. Justice Southcott
BETWEEN:
GRAHAM MCKENZIE ANDREWS
Applicant
and
THOMAS HILARY MCHALE and 1625531 ALBERTA LTD.
Respondents
JUDGMENT AND REASONS
I. Introduction [1] This is an application brought pursuant to section 34 of the Copyright Act, RSC 1985, c C-42 [the Act] and the Court’s jurisdiction under section 20(2) of the Federal Courts Act, RSC 1985, c F-7, wherein the Applicant, Graham McKenzie Andrews [Mr. Andrews], claims declarations and remedies related to alleged copyright infringement and infringement of moral rights by the Respondents, Thomas Hilary McHale [Mr. McHale] and 1625531 Alberta Ltd [Numberco], a company owned by Mr. McHale.
[2] Mr. Andrews is claiming that copyright subsists in four software systems, identified as CIRYS Travel and Rooms Management [CIRYS], GTMS, Gemstones Travel Management Systems, and FIFO (Fly-In/Fly-Out) Flight Scheduling and Aviation Program Management Software [FIFO] [collectively, the Software]. He submits that, pursuant to valid registrations under the Act, he is both joint author and joint owner of the Software, and that he has moral rights related to the Software. Shortly before the date of the hearing, Mr. Andrews filed a Notice of Discontinuance, discontinuing pursuit of several of the remedies sought in his Notice of Application. The remaining remedies he seeks are:
A. Declarations that copyright subsists in the Software, that Mr. Andrews along with Jianfei Xu is joint author and joint owner (in one case along with Mr. Andrews’ company, Applecross Innovations Inc. [Applecross]) of the copyright in the Software, and that the Respondents have infringed his copyright and moral rights;
B. Damages and accounting of the Respondents’ revenue and profits by reason of acts of copyright infringement and payment pursuant to section 35 of the Act or statutory damages pursuant to section 38.1 of the Act; and
C. An Order that Mr. Andrews be remised of legal, moral and financial liabilities, in regard to the Software, created by the actions of the Respondents.
[3] The Respondents dispute the Applicant’s claims and also argue that there are only two works in which copyrights subsists, CIRYS and FIFO, as GTMS and Gemstones Travel Management Systems are simply previous brands or names for CIRYS.
II. Background [4] Mr. McHale is the sole director and voting shareholder of the Respondent, Numberco. Numberco and its subsidiaries are in the business of providing logistical solutions for remote workplaces in Canada, which business includes the use of the Software that is at issue in this application. Dr. Jianfei Xu [Dr. Xu], who is not a party to this application, is a director, officer and shareholder of companies called Draxware Inc [Draxware] and Draxware Solutions Inc. [Draxware Solutions], which have business relationships with Mr. McHale’s companies. While not particularly material to the issues in this application, the corporate structure of the companies owned directly or indirectly, in whole or in part, by Mr. McHale is identified in the chart below which was included in Mr. McHale’s Memorandum of Fact and Law. Excluding Uniengtech Ltd, his Memorandum of Fact and Law refers to these companies as the “Gemstone Companies”, and for consistency I will use the same definition:
Company Name
Shareholdings
Directors
Gemstone Logistics Inc.
[Logistics]
Numberco (0.01%)
McHale (99.99%)
McHale
Gemstone Travel Management Systems Inc.
[GTMSI]
Numberco (51.02%)
Draxware (48.98%)
McHale, Xu and 3 others
Gemstone Global Inc.
Numberco
McHale
Gemstone Travel Inc.
Numberco
McHale
McHale Aviation Services Inc.
Numberco
McHale
Unienginetech Ltd
Gemstone Global Inc (33.3%) Draxware (66.67%)
McHale, Xu and 1 other
[5] Mr. McHale and Dr. Xu met in May 2012. Dr. Xu was seeking assistance in developing markets for a software platform branded as Uni-Engine, a preloaded development tool containing prebuilt code that could serve a wide variety of functions in various industries depending on the data inputted into the platform [the Uni-Engine Platform]. The Uni-Engine Platform is owned by Draxware. Logistics was seeking a software solution to provide intuitive travel and room reservation tools that simplified travel and accommodation management and allowed clients to use a single integrated platform. These objectives were subsequently pursued through a set of agreements between Draxware and the Gemstone Companies that will be explained later in these Reasons.
[6] Mr. Andrews is a former journalist and former employee of Correctional Services Canada and is the owner and operator of Applecross, a company incorporated in June of 2014 which he describes as a software development and technology company. Mr. Andrews entered into a series of employment relationships, and subsequently he and Applecross entered into contractual relationships, with certain of the Gemstone Companies, between November 2012 and September 2014.
[7] Between March 4 and May 7, 2015, Mr. Andrews applied for registration of the copyrights that are the subject of his claim, and the Canadian Intellectual Property Office issued certificates of registration identifying Mr. Andrews and Dr. Xu as joint authors and joint owners of copyrights in GTMS, Gemstone Travel Management Systems, FIFO and CIRYS. His claim that he is a joint author of the Software and joint owner of copyright therein, from which his infringement claims are derived, is based on the contributions to the Software that he describes making during his relationship with the Gemstone Companies.
III. Motions [8] As a preliminary matter, I will address three motions brought by Mr. Andrews and heard at the hearing of this application on April 13, 2016:
A. a motion by Mr.Andrews, argued at the commencement of the hearing of this application, seeking leave under Rules 312 of the Federal Court Rules, SOR/98-106 [the Rules] to file additional evidence in support of his application; and
B. motions by Mr. Andrews, seeking to exclude or strike the Affidavit of Dr. Xu sworn July 15, 2015 [the Xu Affidavit] and the Affidavit of Mr. McHale sworn July 3, 2015, [the McHale Affidavit], upon which the Respondents rely in opposing Mr. Andrews’ application. These motions were argued by the parties in the course of their argument on the application itself.
A. Motion for Leave to File Additional Evidence [9] Mr. Andrews’ motion under Rule 312 [the 312 Motion] sought leave to file an additional Affidavit which he swore on April 4, 2016 [the New Affidavit] in support of his application. He also relied on the New Affidavit in support of his motion for leave. The Respondents opposed the motion. Following argument at the commencement of the hearing on April 13, 2016, I provided an oral decision dismissing the motion but explained that the reasons for my decision would follow with the decision on the main application. These are those reasons.
[10] My decision denied the 312 Motion as Mr. Andrews had not met the test in Rosenstein v Atlantic Engraving Ltd., 2002 FCA 503 [Rosenstein] and in particular had not satisfied the Court that the motion, which was filed on April 4, 2016, should be granted when the evidence in question had been available to him for many months.
[11] This application was begun by Notice of Application dated May 20, 2015, and the Applicant’s Record was filed on December 2, 2015. That Record includes the Affidavit of Mr. Andrews sworn on June 18, 2015, which is the principal evidence relied on in support of his application. His Requisition for Hearing was filed on February 2, 2016.
[12] The New Affidavit refers to information and documents that Mr. Andrews shared with the Respondents through their counsel in November 2015 and describes this evidence as contradicting the evidence in the McHale Affidavit. Mr. Andrews noted in argument that these contradictions include the timing as to when the Software had achieved certain capabilities and Mr. McHale’s contention that anyone, including the users of the Software, could have made the contributions to the Software that Mr. Andrews alleges he made. The New Affidavit refers to deficiencies of the Software, and communications between Mr. Andrews and users of the Software related to deficiencies, ranging between July 2013 and December 2015. It also describes some of Mr. Andrews’ qualifications and refers to conflict of interest concerns he has about the fact that his former counsel, Bennett Jones, represented Mr. McHale between December 7, 2015 and February 4, 2016.
[13] Mr. Andrews correctly identified the decision of the Federal Court of Appeal in Rosenstein as setting out the test the Court is to apply in considering the 312 Motion. The Court may allow the filing of additional evidence if the following requirements are met:
ii. the evidence to be adduced will serve the interests of justice;
iii. the evidence will assist the Court; and
iv. the evidence will not cause substantial or serious prejudice to the other side.
[14] In Rosenstein, at paragraph 9, Justice Nadon also stated that an applicant must show that the evidence sought to be adduced was not available prior to cross-examination of the opponent’s affidavits, as Rule 312 is not there to allow a party to split its case. A party must put its best case forward at its earliest opportunity.
[15] Although Mr. Andrews is self-represented, he has demonstrated an understanding of the Rules. The Respondents refer to Mr. Andrews’ previous filings and correspondence with the Court and with the Respondents’ counsel which demonstrate his awareness of the role of Rule 312 in October 2015 and refer to an intention to present a motion under Rule 312 as early as November 2015. However, he did not file that motion until April 4, 2016, nine days before the hearing of the application, and he has not demonstrated that the evidence he shared with the Respondents in November of 2015 related to the Software’s capabilities and deficiencies was not available at an earlier stage in this proceeding when he was mustering his case.
[16] Rosenstein speaks of whether the evidence was available at the time when cross-examination was conducted, as that case relied on authority that recognizes that new evidence can be introduced if it arises from cross-examination of one’s opponent’s affidavits. But, more broadly, I take Rosenstein to express the point that a party may rely on Rule 312 only if the new evidence was not available to be filed at the appropriate earlier stage in the proceeding when the party was filing its material with the Court in accordance with the Rules.
[17] While it isn’t clear that all the evidence he shared with the Respondents in November 2015 was available to Mr. Andrews when he swore his main Affidavit in June 2015, it was available when he filed his Record in December 2015 and his Requisition for Hearing in February 2016. Although his New Affidavit refers to communications with users of the Software between April and December of 2015, such that the last of those communications may have extended beyond the filing of his Record on December 2, 2015, the nature of this evidence was clearly known to him by then, and all of it was known to him by the time he filed his Requisition for Hearing. The evidence of his qualifications was of course also known to him when he was preparing and filing the documents in support of his case. There is, therefore, no basis for the Court to be admitting this evidence on the day of the hearing.
[18] While I consider that analysis to be determinative of the motion, at least as it relates to the evidence shared with the Respondents in November 2015 and the evidence of Mr. Andrews’ qualifications, I also find that the other Rosenstein factors do not favour its admission:
A. Mr. Andrews has not demonstrated that the introduction of the new evidence is in the interest of justice and would assist the Court. He states that the New Affidavit will contradict the Respondents’ evidence but has provided little support for that assertion, other than statements in the New Affidavit as to what he can demonstrate. In relation to the deficiencies in the Software referred to in the New Affidavit and the evidence as to Mr. Andrews’ qualifications, the Court does not find this evidence to be particularly relevant or material to the issues in this application.
B. Turning to prejudice to the Respondents, Mr. Andrews argues that they were aware of the new evidence since it was shared with them in November 2015. However, as the Respondents argues, they have had no opportunity to cross-examine on the New Affidavit, to seek to strike portions of it they may argue to be irrelevant, to investigate the facts therein, or to file a Supplementary Memorandum of Fact and Law. Although Mr. Andrews has for some time referred in correspondence to an intention to bring a motion under Rule 312, he delayed doing so until the week before the hearing, and in these circumstances the Respondents cannot have been expected to prepare to respond to this evidence. I therefore find they would be prejudiced by its admission.
[19] Finally, I do note that the portion of the New Affidavit referring to Mr. Andrews’ concerns about conflict of interest on the part of Bennett Jones relate to a time period more recent than the evidence about the software. However, Bennett Jones have ceased their representation of Mr. McHale and, while Mr. Andrews still expresses concern that their prior involvement may have resulted in his confidential information becoming available to the Respondents, he has not identified any such information that has been included in the record that is now before the Court. The Court cannot identify any evidence contained in the New Affidavit, related to the conflict of interests concerns, which would be relevant to the issues in this application and serve the interest of justice or assist the Court in adjudicating the application.
[20] As such, the 312 Motion has been dismissed. The Respondents prevailed on the motion and sought costs in the amount of $2000. As communicated orally, I awarded costs of $1000 to the Respondents in any event of the cause. For the sake of good order, my Judgment at the end of these Reasons incudes the disposition of the 312 Motion.
B. Motions to Exclude Xu Affidavit and McHale Affidavit [21] Mr. Andrews describes these motions as seeking to exclude the McHale Affidavit and the Xu Affidavit from consideration by the Court. The Respondents describe the motions as motions to strike these affidavits. While I agree with the Respondents that theirs is the more conventional nomenclature, in my view nothing turns on the language used to describe the motions. As noted above, these motions were argued by the parties in the course of their argument on the application itself, with Mr. Andrews largely relying on his written submissions, and with judgment on the motions reserved.
[22] Many of the points raised by Mr. Andrews, particularly in relation to the McHale Affidavit, are to the effect that the information deposed is without any support in the exhibits or other evidence or is inconsistent with those exhibits. Similarly, Mr. Andrews argues that the deponents have not supported their assertions of the personal knowledge required by Rule 81.
[23] With respect, these arguments do not support a basis to exclude or strike the evidence. They may go to the weight the Court should give this evidence when considering the merits of the application, but the evidence should not be struck on this basis.
[24] The other category of arguments raised by Mr. Andrews with respect to the McHale Affidavit relates to hearsay. He refers to a number of paragraphs in this Affidavit, and focuses on paragraph 4 as a particular example, where he argues the information deposed is based on communication with Dr. Xu.
[25] I have reviewed the paragraphs referenced by Mr. Andrews and agree that paragraphs 4, 5, 7, and 56 include evidence given by Mr. McHale based on communications with Dr. Xu. However, I do not consider any hearsay content to represent a basis for these paragraphs to be struck, because Dr. Xu has separately deposed to these communications in his Affidavit. The evidence is, therefore, part of the record before the Court through a means that does not offend the hearsay rule, and it is acceptable for the McHale Affidavit to refer to that evidence as part of the narrative contained therein. For instance, after the sentence from paragraph 7 deposing as to his understanding from speaking with Dr. Xu that Dr. Xu would be responsible for developing the software, Mr. McHale refers to and attaches a Maintenance Support and Development Agreement documenting that responsibility.
[26] Having reviewed the evidence as a whole, I find no basis to strike or exclude any portion of the McHale Affidavit.
[27] Turning to the Xu Affidavit, I interpret Mr. Andrews to be asserting three categories of arguments:
A. The affidavit contains facts that are not within Dr. Xu’s personal knowledge and includes statements made without supporting documentation and therefore contravenes Rule 81;
B. Portions of the affidavit offend Rule 80(3), because it refers to exhibits attached to the McHale affidavit. Mr Andrews also submits that certain exhibits to the McHale Affidavit, which are referred to in the Xu Affidavit, do not appear to be the documents that are referenced; and
C. The Xu Affidavit is an improper attempt to introduce expert evidence without complying with the expert witness rules. This includes an argument that the Xu Affidavit states conclusion of law, which are for the Court, not the witness, to determine.
[28] As to the arguments related to Rule 81, my conclusion is the same as in relation to the McHale Affidavit. These arguments do not support a basis to strike the evidence. They may go to the weight the Court should give this evidence when considering the merits of the application, but the evidence should not be struck on this basis.
[29] Turning to the exhibits, I do not find the Xu Affidavit to offend Rule 80(3). While it refers to exhibits attached to another Affidavit, that of Mr. McHale, I do not consider that problematic. If a document is properly proven as an exhibit to an affidavit, it is not necessary for another affidavit that refers to the same document to attach it again, as this would represent an unnecessary duplication and expansion of the size of the record. The Respondents acknowledge that Dr. Xu has erred in referring to Exhibit “D” to the McHale Affidavit in identifying a corporate search related to one of his companies, when the correct reference is to Exhibit “E”, but argues that this is not a basis to strike the evidence, with which positon I agree.
[30] I also disagree with Mr. Andrews’ position that the Xu Affidavit represents an improper effort to introduce expert evidence. Dr. Xu was involved in many of the events giving rise to this application, and I consider him to be properly characterized by the Respondents as a lay witness whose evidence is offered in relation to facts rather than expert opinion.
[31] However, I do agree with Mr. Andrews that there are portions of the Xu Affidavit that stray into questions that are either a matter of law or one of the questions that the Court must determine in adjudicating this application. The paragraphs of the Affidavit identified by Mr. Andrews in making this argument relate to:
A. whether authorship is synonymous with coding;
B. whether Mr. Andrews is an author or owner of the Software; and
C. whether Mr. Andrews improperly obtained copyright registrations for the Software.
[32] I do not consider problematic the various places where Dr. Xu refers to authoring the software and then parenthetically refers to this as coding. This reads as an effort to explain that, when he refers to authoring, he is talking about having performed the coding, which is a question of fact.
[33] However, when Mr Xu makes statements that Mr. Andrews had no role in authoring or co-authority this software, and is not its author, co-author, owner, or co-owner, I find he has strayed into the questions the Court must adjudicate. I reach the same conclusion will respect to Dr. Xu’s statements as to his belief that Mr. Andrews and/or Applecross improperly obtained copyright registrations. My Judgment at the end of these Reasons will therefore order the following struck from the Xu Affidavit:
A. In paragraph 25, the words “, or otherwise authoring, co-authoring,”;
B. In paragraph 26, the sentences “Graham Andrews is neither author nor co-author, nor owner nor co-owner of the CIRYS Software. Applecross Innovations Inc. is neither owner nor co-owner of the CIRYS Software.”
C. Paragraphs 27, 32 and 33.
[34] The Respondents seek costs on these motions in any event of the cause. Having dismissed in its entirety the motion to strike the McHale Affidavit, I award the Respondents costs in any event of the cause in the amount of $1000. Having allowed, but only in part, the motion to strike the Xu Affidavit, I award no costs to any party on that motion.
IV. Issues [35] Mr. Andrews submits that the issues raised by this application are the following:
A. Have the Respondents overcome the Applicant’s presumption of rights?
B. Does copyright subsist in the Software as registered by the Applicant?
C. Do the Applicant’s contributions to the Software meet the standard of authorship?
D. Has the Applicant waived both moral and economic rights to the Software?
[36] Taken together, I would summarize the issues raised by the two Respondents as follows:
A. Does copyright subsist in CIRYS and FIFO only?
B. Is Mr. Andrews a joint author of the Software?
C. Is Mr. Andrews a joint owner of the copyright in the Software?
D. Is Mr. Andrews contractually barred from bringing this application?
E. Has there been any copyright infringement by Mr. McHale, Numberco or its related companies?
F. Is Mr. McHale personally liable for the acts of Numberco or its related companies?
G. What relief is within this Court’s jurisdiction to grant? This includes the relief requested by the Respondents that the copyright registrations made by Mr. Andrews be expunged from the Register of Copyrights.
[37] Having considered the parties’ respective arguments, I would restate the issues for the Court’s determination as follows:
A. Do GTMS, Gemstone Travel Management Systems, FIFO and CIRYS constitute separate works in which copyright subsists?
B. Is Mr. Andrews an author of the Software and an owner of the copyright therein, and does he have moral rights therein? This issue engages the sub-issue of the effects of the various agreements between the parties.
C. Has there been any infringement by the Respondents of any copyright or moral rights to which Mr. Andrews is entitled? This issue engages the sub-issue whether McHale is personally liable for any acts of Numberco or other of the Gemstone Companies.
D. If there has been any infringement, to what remedies is Mr. Andrews entitled? Alternatively, are the Respondents entitled to the remedies they request, including expungement of the copyright registrations made by Mr. Andrews?
V. Analysis A. General Comments [38] By way of general comment before embarking on my analysis of the parties’ evidence and arguments on the issues in this application, I note that much of the evidence introduced by Mr. Andrews through his affidavit and the exhibits thereto relate to his dissatisfaction with what he considers to be unmet promises by Mr. McHale with respect to his remuneration, including bonus entitlement, and an alleged oral contract to give him an equity or partnership interest in business deals between the Gemstone Companies and Draxware. Any claim that Mr. Andrews may have against the Respondents or any of the Gemstone Companies related to these issues is not within the jurisdiction of the Federal Court.
[39] Therefore, and to avoid commenting on issues that may at some time be the subject of litigation before a Provincial Superior Court, I do not intend to address the evidence related to Mr. Andrew’s remuneration or the alleged oral contract, with one exception. That exception is to address an argument made by Mr. Andrews that his contribution to the development of the Software was made outside his employment relationship with the Gemstone Companies. He raises this argument in response to the Respondents’ reliance on section 13(3) of the Act, which gives ownership in the copyright to a work to the employer, where the work was authored by an employee in the course of his or her employment. I consider it necessary to engage in some limited analysis of the evidence related to the alleged oral contract (which I will do later in these Reasons when considering the various agreements between the parties) in order to assess whether it lends support to this argument by Mr. Andrews.
[40] By way of further general comment, I note that, when one focuses on the evidence related to the issues surrounding copyright that are within this Court’s jurisdiction, this application requires little in the way of credibility determinations. I note that none of the affidavits filed by the parties in this application has been challenged by way of cross-examination. However, there is little inconsistency in the evidence that is relevant to the copyright issues. Rather, my decision turns largely on the application to this evidence of the relevant law.
B. Number of Separate Works in which Copyright Subsists [41] Mr. Andrews argues that the Software is composed of four separate original works (GTMS, Gemstone Travel Management Systems, FIFO and CIRYS) and that copyright subsists in each. He submits that the input of the initial data into the Uni-Engine Platform resulted in GTMS, the first variation of industry-specific software, and argues that section 2 of the Act, which defines terms used in the statute, states that “work includes the title thereof when such title is original and distinctive”. As the titles to the different pieces of Software are original and distinctive, Mr. Andrews’ position is that each is a separate work capable of copyright registration.
[42] The Respondents take the position that copyright subsists in CIRYS and FIFO but that there is no copyright in GTMS or Gemstone Travel Management Systems because GTMS, Gemstone Travel Management Systems and CIRYS are all the same work. They note that in order for a work to be original, it must be more than a copy (CCH v Law Society of Upper Canada, 2004 SCC 13 at para 16 [CCH]). The Respondents argue that the only difference among GTMS, Gemstone Travel Management Systems and CIRYS is the name, as they are all the same software, and that the change of name is too trivial to merit copyright protection as an original work.
[43] The Respondents’ factual assertion, that CIRYS, GTMS and Gemstone Travel Management Systems are all the same piece of software, is supported by Mr. McHale’s evidence that these are three different ways of branding the same software platform, which is currently called and marketed to clients as CIRYS. Mr. McHale’s evidence was not challenged on cross-examination, and in any event Mr. Andrews’ position appears to be based not on a different understanding of the facts but rather on the effect of the definition of “work” under the Act.
[44] Turning to the Act, section 5(1) provides that, subject to the Act and certain jurisdictional conditions that are not at issue here, copyright subsists in “every original literacy, dramatic, musical and artistic work”. Section 2 defines that phase as follows:
every original literary, dramatic, musical and artistic work includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science;
toute oeuvre littéraire, dramatique, musicale ou artistique originale S’entend de toute production originale du domaine littéraire, scientifique ou artistique quels qu’en soient le mode ou la forme d’expression, tels les compilations, livres, brochures et autres écrits, les conférences, les oeuvres dramatiques ou dramatico-musicales, les oeuvres musicales, les traductions, les illustrations, les croquis et les ouvrages plastiques relatifs à la géographie, à la topographie, à l’architecture ou aux sciences.
[45] Relevant to later portions of these Reasons, section 2 also defines “literary work” to include tables, computer programs, and compilations of literary works. However, for purposes of the present issue, what is significant is the term “original” in the definition of “every original literary, dramatic, musical and artistic work”. In CCH, the Supreme Court of Canada defined “original” as follows:
16 I conclude that the correct position falls between these extremes. For a work to be "original" within the meaning of the Copyright Act, it must be more than a mere copy of another work. At the same time, it need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one's knowledge, developed aptitude or practised ability in producing the work. By judgment, I mean the use of one's capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. For example, any skill and judgment that might be involved in simply changing the font of a work to produce "another" work would be too trivial to merit copyright protection as an "original" work.
[46] As such, originality requires a non-trivial exercise of skill and judgment in producing a work, and a work which is a mere copy of another will not be considered original unless this requirement is met. The question is therefore whether the rebranding to CIRYS of the software formerly known as GTMS and Gemstone Travel Management Systems, effectively just changing the name of the software or the title of the work, represents the required exercise of skill and judgment necessary to make it original.
[47] However, having considered this issue, my conclusion is that it is unnecessary for the Court to decide this question in the present case, as nothing would turn on the answer to this question. I do not understand Mr. Andrews to be arguing that he contributed to the selection of the different titles for the software currently branded as CIRYS. Therefore, the analysis whether he authored, has copyright ownership in, or moral rights to the Software, which is the next set of issues to be addressed in these Reasons, does not depend on whether the Software in which copyright subsists consists of two works or four.
C. Authorship, Ownership and Moral Rights (1) The Applicant’s Position [48] Mr. Andrews’ position is that he provided the “context and content” by which the Uni-Engine Platform received the data fundamental to its functionality. He states in his Affidavit that he began working with Dr. Xu on the Software in January 2013 and that, when he initially began working with Dr. Xu, the Uni-Engine Platform had no industry-specific functionality but that, by early spring of 2013, based solely on his and Dr. Xu’s work, GTMS was of sufficient functionality to be moved into a live environment. His evidence is that he and Dr. Xu led the initial soft rollout of GTMS in May 2013 and that he led presentations to customers in that month and on at least two additional occasions. Mr. Andrews states that the Software began revenue-generating operations on September 16, 2013 and that up to that time period, he and Dr. Xu were the only members of the software development team.
[49] Mr. Andrews asserts that his contribution to the Software is such that he and Dr. Xu are joint authors of, and joint owners of the copyright in, CIRYS, GTMS, and Gemstones Travel Management Systems. He similarly asserts that he and Dr. Xu are joint authors of FIFO and that he, his company Applecross and Dr. Xu are joint owners of the copyright therein. Mr. Andrews’ position that Applecross shares in the ownership interest related to FIFO derives from the fact that this piece of software was developed later (according to the McHale Affidavit, beginning in April 2014 and being commercially viable by June 2015) and that his relationship with the Gemstone Companies was as of July 2014 through a consulting agreement with Applecross. His assertion of moral rights to the Software stems from his alleged authorship.
(2) The Respondents’ Position [50] The Respondents’ position is that the Software was authored solely by Dr. Xu. They argue that authorship requires the creation of an original work and that, to be considered an author, Mr. Andrews must prove that he created the work along with Dr. Xu. The Respondents note that the Software, being computer programs, falls within the definition of “literary work” under section 2 of the Act and “computer program” is in turn defined in section 2 as follows:
computer program means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result;
programme d’ordinateur Ensemble d’instructions ou d’énoncés destiné, quelle que soit la façon dont ils sont exprimés, fixés, incorporés ou emmagasinés, à être utilisé directement ou indirectement dans un ordinateur en vue d’un résultat particulier.
[51] The Respondents submit that the “set of instructions or statements” forming part of the definition of a computer program is created and expressed through code conceived and written to produce a particular result. That is, the author of the computer program is the person who wrote the code.
[52] The Respondents note that it is not contradicted that Dr. Xu developed and authored the Uni-Engine Platform, the base from which the Software was developed. They then rely on the evidence as to Dr. Xu’s qualifications in software architecture and design and argue that the evidence demonstrates that Dr. Xu developed and coded the source code for the Software and had responsibility for and overall oversight of the source code.
[53] In contrast, the Respondents argue that Mr. Andrews’ intellectual contribution to the Software was limited and did not extend to any activities that could be characterized as authorship. With respect to the development and coding of the Software, their position is that Mr. Andrews simply assembled certain information and presented it to Dr. Xu, who then analyzed the information and determined which information would be useful and how that information could be best used before writing the code to implement any changes. Therefore, they argue, Dr. Xu is the sole author, as it was the application of his experience, skill, judgement and labour that formed the code.
(3) Statutory Presumptions [54] Before turning to the evidence on these issues, I note that Mr. Andrews argues that his claim is supported by statutory presumptions. These presumptions are derived from sections 34.1 and 53 of the Act, which provide as follows:
34.1 (1) In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it,
34.1 (1) Dans toute procédure civile engagée en vertu de la présente loi où le défendeur conteste l’existence du droit d’auteur ou la qualité du demandeur :
(a) copyright shall be presumed, unless the contrary is proved, to subsist in the work, performer’s performance, sound recording or communication signal, as the case may be; and
a) l’oeuvre, la prestation, l’enregistrement sonore ou le signal de communication, selon le cas, est, jusqu’à preuve contraire, présumé être protégé par le droit d’auteur;
(b) the author, performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright. (Emphasis added)
b) l’auteur, l’artiste-interprète, le producteur ou le radiodiffuseur, selon le cas, est, jusqu’à preuve contraire, réputé être titulaire de ce droit d’auteur.
(Non souligné dans l’original)
53 (1) The Register of Copyrights is evidence of the particulars entered in it, and a copy of an entry in the Register is evidence of the particulars of the entry if it is certified by the Commissioner of Patents, the Registrar of Copyrights or an officer, clerk or employee of the Copyright Office as a true copy.
53 (1) Le registre des droits d’auteur, de même que la copie d’inscriptions faites dans ce registre, certifiée conforme par le commissaire aux brevets, le registraire des droits d’auteur ou tout membre du personnel du Bureau du droit d’auteur, fait foi de son contenu.
(2) A certificate of registration of copyright is evidence that the copyright subsists and that the person registered is the owner of the copyright.
(2) Le certificat d’enregistrement du droit d’auteur constitue la preuve de l’existence du droit d’auteur et du fait que la personne figurant à l’enregistrement en est le titulaire.
(2.1) A certificate of registration of an assignment of copyright is evidence that the right recorded on the certificate has been assigned and that the assignee registered is the owner of that.
(2.1) Le certificat d’enregistrement de la cession d’un droit d’auteur constitue la preuve que le droit qui y est inscrit a été cédé et que le cessionnaire figurant à l’enregistrement en est le titulaire.
(2.2) A certificate of registration of a licence granting an interest in a copyright is evidence that the interest recorded on the certificate has been granted and that the licensee registered is the holder of that interest.
(2.2) Le certificat d’enregistrement de la licence accordant un intérêt dans un droit d’auteur constitue la preuve que l’intérêt qui y est inscrit a été concédé par licence et que le titulaire de la licence figurant au certificat d’enregistrement détient cet intérêt.
(3) A certified copy or certificate appearing to have been issued under this section is admissible in all courts without proof of the signature or official character of the person appearing to have signed it.
(Emphasis added)
(3) Les copies certifiées conformes et les certificats censés être délivrés selon les paragraphes (1) ou (2) sont admissibles en preuve sans qu’il soit nécessaire de prouver l’authenticité de la signature qui y est apposée ou la qualité officielle du signataire.
(Non souligné dans l’original)
[55] The Respondents have referred the Court to the decision of the Ontario Superior Court of Justice in Close Up International Ltd v 1444953 Ontario Ltd (2006), 151 ACWS (3d) 513 (Ont Master) [Close Up] for its analysis of the operation of these presumptions. Close Up addressed a different presumption, that contained in section 53(2.2) of the Act, its analysis of which is set out as follows in paragraph 17 of the decision:
17 … However, as stated in 955105 Ontario Inc. v. Video 99 (1993), 48 C.P.R. (3d) 204 (O.C.G.D.): “No proof of title is required on an application for registration. The Copyright Office assumes no responsibility for the truth of the facts asserted in the application and conducts no independent examination.” A plaintiff who produces such a certificate “has adduced some evidence