GE Renewable Energy Canada Inc. v. Canmec Industrial Inc.

GE Renewable Energy Canada Inc. v. Canmec Industrial Inc.
Court (s) Database
Federal Court Decisions
Date
2024-06-11
Neutral citation
2024 FC 887
File numbers
T-1471-21
Decision Content
Date: 20240611
Docket: T-1471-21
Citation: 2024 FC 887
Ottawa, Ontario, June 11, 2024
PRESENT: Mr. Justice McHaffie
BETWEEN:
GE RENEWABLE ENERGY CANADA INC.
Plaintiff
and
CANMEC INDUSTRIAL INC.
Defendant
and
RIO TINTO ALCAN INC.
Third Party
ORDER AND REASONS
I. Overview [1] The plaintiff, GE Renewable Energy Canada Inc [GEREC], again seeks to amend its Amended Statement of Claim in this copyright infringement action. I granted its last motion to amend in part and dismissed it in part, for reasons reported at 2024 FC 187 [GEREC I].
[2] The amendments GEREC now seeks to make fall into three main categories. The first would add a list of 272 works to the 33 works that constitute the “GEREC Designs” that GEREC alleges have been infringed. The second would add allegations of infringement of a new category of 306 works, the “GEREC Construction & Installation Works.” The third would make the third party, Rio Tinto Alcan Inc, a defendant to the main action, adding new allegations that Rio Tinto itself infringed both the GEREC Designs and the GEREC Construction & Installation Works.
[3] GEREC also seeks an order adjourning the trial in the matter, currently scheduled to commence in October 2024, and doing so for a longer period if leave is granted to make the requested amendments.
[4] For the reasons below, I conclude that it is not in the interests of justice to permit GEREC to make the contested amendments it now seeks to make at this stage of the proceeding. The proposed amendments would necessitate further discovery, a significant adjournment of the trial, and, in the case of the GEREC Construction & Installation Works in particular, a material expansion of the scope of the action late in the proceeding. GEREC has been aware of the material facts relevant to raise the allegations it now seeks to add since at least late June or early July 2023. Since that time, the parties have brought two rounds of discovery motions, agreed to adjourn the trial, and have undertaken a second round of examinations for discovery. GEREC’s reference to information received recently in the second round of examinations as justification for the delay in raising the allegations is unpersuasive. I conclude that GEREC’s request to amend the Amended Statement of Claim is not timely, the proposed amendments would necessitate an adjournment of the trial that would otherwise be unnecessary, and they would not facilitate the Court’s consideration of the substance of the dispute on its merits. Although the proposed amendments would not require Canmec or Rio Tinto to materially change their position or follow a different course of action, the balance of relevant factors leads me to conclude that the amendments are not in the interests of justice at this time.
[5] While GEREC has requested an adjournment of the trial even if the amendments are not granted, it has presented no grounds sufficient to justify this request. The parties should be in a position to complete remaining pre-trial steps in advance of the current fixed trial dates.
[6] GEREC’s motion is therefore dismissed except in respect of certain minor amendments the responding parties do not object to. GEREC shall pay costs to Canmec in the amount of $5,000, and to Rio Tinto in the amount of $4,500, in any event of the cause.
II. Issues [7] GEREC’s motion raises two main questions, namely:
Should the Court grant leave to make the further proposed amendments to the Amended Statement of Claim, in whole or in part?
Should the Court grant an adjournment of the trial, whether leave is granted to amend the Amended Statement of Claim or not?
[8] These questions are interrelated, as the parties agree that to the extent that significant amendments to the Amended Statement of Claim are permitted, this will necessitate an adjournment of the trial. The fact that such amendments will necessitate adjournment of the trial is also a factor for the Court to consider in assessing whether they are in the interests of justice.
III. Analysis A. Amendment of the Amended Statement of Claim (1) Legal principles [9] The principles on a motion to amend are not in dispute. I summarized them in my decision in GEREC I. In the interests of efficiency, I will simply repeat that discussion here.
[10] The general rule is that an amendment pursuant to Rule 75(1) of the Federal Courts Rules, SOR/98-106 should be allowed at any stage of an action for the purpose of determining the “real questions in controversy,” provided that allowing the amendments (i) would not result in an injustice to other parties not capable of being compensated by an award of costs; and (ii) would serve the interests of justice: Enercorp Sand Solutions Inc v Specialized Desanders Inc, 2018 FCA 215 at para 19, quoting Canderel Ltd v Canada, 1993 CanLII 2990 (FCA) at p 10; McCain Foods Ltd v JR Simplot Company, 2021 FCA 4 at para 20; Janssen Inc v Abbvie Corporation, 2014 FCA 242 at para 9. The onus lies on the amending party to show the amendments should be allowed: Merck & Co, Inc v Apotex Inc, 2003 FCA 488 at paras 29, 35–36.
[11] In assessing whether an amendment would serve the interests of justice, the Court may consider factors such as (i) the timeliness of the motion to amend; (ii) whether the proposed amendments would delay trial; (iii) whether the amending party’s prior position has led another party to follow a course of action in the litigation that it would be difficult to alter; and (iv) whether the amendments will facilitate the Court’s consideration of the substance of the dispute on its merits: Enercorp at paras 20–21, quoting Continental Bank Leasing Corp v Canada, 1993 CanLII 17065 (TCC) at p 2310; Federal Courts Rules, Rule 3. These factors are considered together without any single factor being determinative.
[12] An amendment must also yield a sustainable pleading, and an amendment that is liable to be struck out under Rule 221 should not be permitted: Enercorp at para 22; McCain at paras 20–22; Teva Canada Limited v Gilead Sciences Inc, 2016 FCA 176 at paras 28–32. Thus, where it is plain and obvious that proposed amendments do not disclose a reasonable cause of action, or the amendments represent a “radical departure” from the party’s prior positions, they should not be permitted: Rule 221(1)(a),(e); Enercorp at paras 22–28; McCain at paras 20–23; Hospira Healthcare Corporation v The Kenny Trust for Rheumatology Research, 2020 FCA 191 at para 5, citing Merck at para 47; Atlantic Container Lines AB v Cerescorp Company, 2017 FC 465 at para 8; Proslide Technology, Inc v Whitewater West Industries, Ltd, 2023 FC 1591 at paras 15–16; but see J2 Global Communications Inc v Protus IP Solutions Inc, 2009 FCA 41 at paras 8–10. This has been described as a “threshold issue,” to be addressed before turning to other questions of justice and injustice: Teva at para 31.
[13] Pleadings that are inadequately particularized to allow the opposing party to plead in response are also subject to being struck under Rule 221 for failure to comply with the requirement in Rule 174 that they contain “a concise statement of the material facts on which the party relies”: Mancuso v Canada (National Health and Welfare), 2015 FCA 227 at paras 16–20; Fox Restaurant Concepts LLC v 43 North Restaurant Group Inc, 2022 FC 1149 at paras 4, 20–32. Amendments may similarly be refused on this ground, whether considered as a threshold issue or as a matter of the interests of justice: McCain at paras 22–23; Enercorp at paras 34–37. However, where appropriate, a lack of particulars in a proposed amendment may be addressed by granting leave to reapply or by imposing an obligation of particulars as a condition of the amendment: Enercorp at paras 26–30, 34–38; Atlantic at para 15.
[14] I add one further note to the foregoing summary. Where a party seeks to amend a pleading after discovery and seeks to rely on discovery evidence to justify its proposed amendment, it is open to the Court to review and assess that evidence in determining whether, taking a realistic view in the context of the law and the litigation process, the proposed amendment discloses a reasonable cause of action or is “doomed to fail”: Teva at paras 27–32, 38–42. In this regard, the Federal Court of Appeal has noted that an allegation made without any evidentiary foundation is an abuse of process, and that an unsupported allegation cannot be sustained simply in the hope that sufficient facts will be obtained on discovery that will support the allegation: AstraZeneca Canada Inc v Novopharm Limited, 2010 FCA 112 at paras 4–5.
[15] In other words, while the general rule is that the factual allegations in a proposed amendment are to be assumed to be true, it is relevant to both the threshold issue and, at the very least, the interests of justice whether a proposed amendment is supported or contradicted by the available discovery evidence. At the same time, a motion to amend is not the occasion to weigh competing evidence where the amending party has established credible evidentiary support for its amendments: Atlantic at para 16. As GEREC underscores, a motion to amend is not a motion for summary judgment or summary trial.
(2) Nature and status of the action [16] As described in GEREC I, this action stems from the refurbishment of Rio Tinto’s hydroelectric power plant in Alma, Québec, known as the Isle-Maligne Plant, which has twelve turbine-generator units. Each unit has two water intake valves (termed “butterfly valves”), each of which is attached to a winch allowing it to be opened and closed.
[17] In 2016, GEREC and Rio Tinto entered agreements for a pilot project to refurbish Unit 1, and later Unit 2. In the context of these projects, GEREC contacted Canmec as a potential subcontractor for the butterfly valve on Unit 2. On March 9, 2018, GEREC sent Canmec 33 manufacturing drawings related to the butterfly valve. For ease of reference, I will refer to these drawings as the “33 Works.” The 33 Works are dated in 2016 or 2017. They appear to have been prepared in the context of the Unit 1 project (they bear the project number of that project), but were sent to Canmec as a potential subcontractor on the Unit 2 project.
[18] Canmec was ultimately not selected as a subcontractor for the butterfly valve. However, Canmec was nonetheless involved in the refurbishment pilot projects, having contracted with Rio Tinto for the replacement of the winches for Units 1 and 2. GEREC alleges it completed the refurbishment of the two units in late 2018, although Rio Tinto alleges that work on Unit 1 ended in the second quarter of 2019 and the work on Unit 2 ended in the second quarter of 2020.
[19] In April 2019, Rio Tinto issued a request for quotation [RFQ] related to the refurbishment of the ten remaining units at the Isle-Maligne Plant, namely Units 3 to 12. GEREC and Canmec were among the bidders who responded to the RFQ; Canmec’s bid was accepted by Rio Tinto. GEREC’s allegations of copyright infringement arise from Canmec’s successful bid on the Rio Tinto project.
[20] GEREC commenced this action in September 2021, alleging that Canmec infringed copyright in the 33 Works, which are defined as the “GEREC Designs.” Canmec defended the action and brought a third party claim against Rio Tinto, alleging that Rio Tinto should indemnify it for any infringement of copyright that might be found as a result of Canmec’s actions. Rio Tinto defended the third party claim, and also defended GEREC’s claim against Canmec, as permitted by Rule 197.
[21] In March 2023, a date was fixed for trial of the matter, for a duration of ten days commencing in May 2024. Examinations for discovery were conducted in April and May 2023, and the parties exchanged responses to undertakings in late June and early July 2023. A first discovery motion was heard in September 2023. That motion resulted in the production by GEREC of its project file of some 23,000 additional documents. In light of this, the parties consented to the adjournment of the May 2024 trial dates. On October 18, 2023, the trial was set down for ten days commencing October 21, 2024, about four and half months from now.
[22] The Federal Court’s Amended Consolidated General Practice Guidelines, dated December 20, 2023 [Guidelines], say the following about fixed hearing dates and adjournments:
Adjournments
48. The Federal Court operates on a guaranteed, fixed-date system, meaning that when the Court has fixed a date for a hearing, parties are expected to proceed on that date. Adjournments of hearings cause inconvenience and expenses. Court resources are not used efficiently as there often is not sufficient time to schedule another matter to take the place of the adjourned hearing.
49. Nevertheless, the Court recognizes that there may be exceptional and unforeseen circumstances, including those that are outside the control of a party or its counsel, in which it may be reasonable to request an adjournment.
[Emphasis added.]
[23] These principles apply with particular force in the context of a trial where, as here, hearing dates spanning multiple days are fixed well in advance.
[24] In its earlier motion to amend, brought in late 2023 and heard earlier this year, GEREC sought to amend the definition of the “GEREC Designs” by adding language that would include in the definition a large number of unidentified works. In GEREC I, I concluded this proposed amendment did not meet the requirements of Rule 174 as it was inadequately particularized, failing to identify a closed and specific list of works alleged to be infringed: GEREC I at paras 46–53. I granted GEREC leave to reapply to amend its claim “in respect of the works constituting the GEREC Designs,” stating that if it chose to do so, it should seek a case management conference to address such a motion “at the earliest opportunity”: GEREC I at para 66.
[25] GEREC provided Canmec and Rio Tinto with a draft of further proposed amendments to its Amended Statement of Claim on February 28, 2024. Other drafts followed, with GEREC ultimately serving its notice of motion to amend in late April 2024, and amending it in late May. In the interim, the parties had conducted follow-up discoveries in January 2024, had provided answers to undertakings in March and April 2024, and argued a second discovery motion in early May 2024.
(3) Nature of the proposed amendments [26] As noted at the outset, GEREC’s proposed amendments fall into three main categories. The first involves the definition of the “GEREC Designs.” As with its earlier motion to amend, GEREC seeks to expand the definition of the GEREC Designs alleged to have been infringed from the 33 Works that have been at issue since the outset of the proceeding to a list of 305 works, set out in a new Schedule A to the claim. The 272 new documents on Schedule A are of three types: (i) other versions or revisions of the 33 Works (254 documents); (ii) two manufacturing drawings that were not part of the 33 Works, in various versions or revisions for Units 1 and 2 (17 documents); and (iii) a 3‑dimensional computer-aided design [3D CAD] model presented in a computer file prepared in a program called SolidWorks [the “SolidWorks File”]. These works constitute a subset of the estimated 2,000 to 2,400 works that GEREC sought to add to the definition of the GEREC Designs on the earlier motion to amend.
[27] I note that GEREC again, and despite my observations in GEREC I, contends that the amendments in this first category simply seek to “clarify and particularize existing pleadings.” I reject this characterization, for the same reasons I gave on the last motion: GEREC I at paras 30–35. Rather, the amendments in this category would significantly expand the list of works said to have been infringed, from 33 to 305.
[28] The second category of amendments also seeks to add to the list of works alleged to have been infringed, but the works are of a different nature. GEREC seeks to add allegations of infringement in respect of 306 works defined as the “GEREC Construction & Installation Works,” identified in a proposed Schedule B to the claim. These works are described as construction and installation documents and drawings to be used in the refurbishment of the Isle-Maligne Plant, created or commissioned by GEREC as part of its contract with Rio Tinto in connection with the two pilot projects. GEREC seeks to allege that Rio Tinto improperly shared these works with Canmec, and that they were improperly shared, copied, and used in connection with the RFQ and the refurbishment of Units 3 to 12. The construction and installation documents and drawings identified in Schedule B are of a different type than those raised on the earlier motion and were not within the scope of the documents GEREC sought to add to the claim on that motion.
[29] The third category of amendments seeks to add Rio Tinto as a defendant to the action and to allege that it infringed GEREC’s copyright in both the GEREC Designs and the GEREC Construction & Installation Works. The proposed amendments allege that Rio Tinto had copies of the works from GEREC by virtue of the pilot projects, and infringed copyright in them by (i) distributing them to Canmec; (ii) using and copying them to set out the requirements in the RFQ; and (iii) using and copying them to direct Canmec’s infringing conduct, including Canmec’s production of infringing drawings and documents in relation to the refurbishment of Units 3 to 12. GEREC seeks, among other remedies, damages and an accounting of Rio Tinto’s profits, or statutory damages, as it may elect.
[30] These three categories overlap, in that GEREC’s amendments seek to allege that both Canmec and Rio Tinto have infringed copyright in both the GEREC Designs and the GEREC Construction & Installation Works.
(4) Amendments in the first category: GEREC Designs/Schedule A [31] As indicated, the amendments GEREC seeks to make in the first category relate to the definition of the GEREC Designs. The central amendments in this category are found in paragraph 12 and a new Schedule A to the Amended Statement of Claim, with consequential amendments in paragraphs 18, 19, and 20. The proposed amendment to paragraph 12 removes reference to the 33 manufacturing drawings, instead defining the GEREC Designs with reference to Schedule A. The proposed Schedule A sets out 305 works, including the 33 Works. For each, Schedule A provides a number (A-001 to A-305); the title of the work; the project for which it was produced (i.e., the pilot project for Unit 1 or Unit 2); the GEREC internal reference number of the work; the revision letter if applicable (e.g., revision A or revision B); its production number in the litigation; and the author(s) of the work. Notes on the schedule state that the authors indicated are “in addition to all authors indicated on any earlier revision(s) of the same drawing/document,” and that all authors are Canadian or French.
[32] The 272 works GEREC proposes to add to the definition of the GEREC Designs through Schedule A are of three different types, with different issues and context. I will therefore address each of the types in sequence.
(a) Other versions and revisions of the 33 manufacturing drawings [33] Most of the new documents on Schedule A (254 of the 272 new documents) are different versions or revisions of the 33 Works that currently constitute the GEREC Designs. These include the original versions of the drawings and other revisions dated before and after the versions sent to Canmec in March 2018. For example, the first of the 33 Works sent to Canmec was “Revision E” of a manufacturing drawing of an element of the butterfly valve, prepared for the work on Unit 2. This document appears as Document A-012 in the proposed Schedule A. The original version (“Revision 0”) of the drawing and Revisions A to D and F, appear in Schedule A as Documents A-007 to A-011 and A-013, respectively. Thus, Schedule A lists seven documents that are simply different versions of the drawing of the same element of the valve. In addition, Schedule A includes four more drawings of the same element, but prepared for the work on Unit 1 rather than Unit 2. GEREC confirmed, in the course of discoveries, that the valve designs between Unit 1 and Unit 2 are “mostly the same, with only small differences in design.”
(i) Threshold issue [34] Canmec argues the proposed amendments adding these documents are insufficiently particularized to meet the requirements of Rule 174. It therefore argues the amendments should be refused as they would not survive a motion to strike. In particular, Canmec argues that the identification of the authors of the works contradicts particulars GEREC provided earlier regarding authorship of the 33 Works, that GEREC has not sought leave to amend those particulars, and that Canmec should not have to guess who the authors of the works are or to conduct further discovery without such information.
[35] I am satisfied that the proposed amendments in this category are adequately particularized. Schedule A identifies a closed and specific list of these works and their authorship. Although Canmec refers to earlier drafts of GEREC’s proposed Schedule A, which did not include authorship information, the version presented to the Court for determination at the hearing of the motion does. As for the asserted conflict between the current list of authors and the prior particularization, both Canmec and Rio Tinto consented to amendments pertaining to the author-related information for the 33 Works that are currently the GEREC Designs.
[36] The Amended Statement of Claim also contains sufficiently particularized allegations of how the works have been infringed: Fox Restaurant at paras 23, 32. As with the 33 Works, each of the listed documents appears to be a single page of manufacturing drawings. Justice Grammond earlier found that the allegations of infringement of the 33 Works had been sufficiently particularized, since Canmec would [translation] “certainly be able to identify the parts of the GEREC Designs of which infringement is alleged”: Order of Justice Grammond, April 5, 2022 (see GEREC I at paras 19–22). This finding applies equally to the other revisions of the 33 Works, which are highly similar to the 33 Works.
[37] Rio Tinto argues GEREC has not adequately pleaded the chain of title in the documents, noting that a plaintiff in a copyright action must “plead the chain of title relating to the work which it owns including references to applicable assignments,” and that failure to do so can be fatal to the claim: John S McKeown, Fox on Canadian Law of Copyright and Industrial Designs, 4th ed (Toronto: Thomson Reuters, 2023) at §24:22, citing NAV Canada v Adacel Technologies Ltd, 2006 FCA 227 (at paras 8 to 12). Although this argument was raised generally in respect of all of the amendments, it appears to relate primarily to certain documents falling into other categories, and in particular documents in Schedule B. The 254 documents that are other versions of the 33 Works all appear, both on their face and through the author’s list in Schedule A, to have been prepared by employees of GE Hydro France. In the circumstances, including the discovery conducted to date, I am satisfied that the proposed amendments are sufficiently particularized as to the chain of title in these documents. In any event, I agree with GEREC that any such deficiency could have been cured by requiring particulars of the chain of title to be provided as part of any order granting leave to amend.
[38] I am therefore satisfied the amendments seeking to add these documents meet the threshold issue of a pleading that is adequately particularized to disclose a reasonable cause of action.
(ii) Interests of justice [39] Although GEREC’s proposed amendments alleging infringement of the 254 other revisions of the 33 Works raise a tenable pleading, I conclude it would not be in the interests of justice to grant GEREC leave to make them.
[40] I begin with the question of whether the amendments would assist in determining the “real questions in controversy”: Enercorp at para 19; McCain at para 20. It is difficult for the Court to see how adding allegations of infringement of other revisions of the 33 Works that have been at issue since the outset of this action goes to the “real questions in controversy.” The real question in controversy is whether Canmec infringed copyright in GEREC’s manufacturing drawings in its bidding and work on the refurbishment of Units 3 to 12. Adding allegations that multiple other versions of the same drawings were also infringed by the same conduct does not go to the real question in controversy and would not “facilitate the court’s consideration of the true substance of the dispute on its merits”: Continental Bank at p 2310.
[41] This is particularly so when GEREC does not allege that Canmec infringed copyright in the other versions of the drawings through different conduct or in a different manner than its allegations in respect of the 33 Works. Indeed, GEREC has presented no evidence that Canmec received or saw any other versions of the manufacturing drawings other than the versions that constitute the 33 Works. Rather, GEREC’s primary allegation appears to be effectively that if Canmec is found to have infringed copyright in one or more of the 33 Works it received in March 2018, then it also infringed copyright in the other versions of that same work. When asked whether, given the similarities between the various versions, Canmec could realistically be found to have infringed copyright in one version of a drawing without being found to have infringed copyright in the others, GEREC could do no more than argue that such a finding was “conceivable” without further specifics or examples. GEREC’s allegations with respect to the other versions of the 33 Works thus appear to amount to no more than a multiplication of infringement allegations with no additional substance.
[42] Nor am I persuaded by GEREC’s arguments that the existence of other versions of the 33 Works might potentially affect its remedies. GEREC confirmed in oral submissions that it was not seeking to augment its claim for statutory damages by asserting infringement of multiple versions of the drawings as multiple “works” to which a separate statutory damages claim might attach. It certainly presented no authority for the proposition that a higher statutory or actual damages award, or a different accounting of profits, should apply in circumstances where a plaintiff has a number of earlier drafts or versions of a work infringed by a defendant.
[43] The nature of GEREC’s allegations relating to these other versions, namely that they are also infringed if the versions constituting the 33 Works are infringed, also raises the question of the timeliness of the request to amend. GEREC has known about the other versions of the 33 Works since the date they were created, and certainly before the commencement of this litigation. To the extent that Canmec’s infringement of the 33 Works also constitutes infringement of the other versions, GEREC was in a position to make that allegation from the outset of the proceedings, well over two years ago.
[44] GEREC argues that during the discovery process, it became aware of more widespread sharing of its copyrighted works between Rio Tinto and Canmec, and that this justifies its request to now add allegations in respect of the other versions. However, GEREC concedes there is no new evidence that Canmec received or had access to the various additional versions of the 33 Works. To the contrary, Canmec was asked during the second round of discovery in January 2024 to [translation] “[c]onfirm all occasions on which Canmec received GE drawings” [Question 261]. It responded to Question 261 in March 2024 by referring to past productions and providing new documents in respect of such occasions. GEREC does not contend that any of these include other versions of the 33 Works.
[45] Although not raised in GEREC’s written representations, it submitted at the hearing of this motion that it seeks to add the other versions to the definition of GEREC Designs to avoid the possibility that Canmec or Rio Tinto might limit their responses on discovery to only the particular versions of the documents that constitute the 33 Works, and might not answer, or refuse to answer, questions about other versions. However, GEREC has already conducted its examinations for discovery. It pointed to no answer or refusal given during those examinations that might give any air of reality to this purported concern. Indeed, it appears that GEREC did not ask any questions about other versions of the 33 Works that might have elicited such a refusal. As noted above, Canmec responded to Question 261 without such limitation or refusal. Nor is there any air of reality to GEREC’s hypothetical concern, again identified at the hearing, that Canmec or Rio Tinto might raise a defence at trial, not raised to date, to the effect that any copying or use made of GEREC’s drawings was of a different version than the version found in the 33 Works. I am therefore not persuaded that GEREC’s hypothetical concerns about potential limitations on any future discovery or new trial defences presents a reason in favour of adding a significant number of new works to the claim at this stage of the proceeding.
[46] The foregoing factors speak against granting leave. So does the delay of trial that would be occasioned by the addition of these allegations, which would require additional examinations for discovery on the new versions, and would require the parties’ experts to address the new allegations. In this regard, GEREC argues that adjourning the trial would not cause any prejudice or injustice to Canmec or Rio Tinto that could not be compensated in costs: Enercorp at para 19. However, I agree with Rio Tinto that the very adjournment of trial, particularly for a second time, may entail a degree of prejudice: see, e.g., Apotex Inc v Shire Canada Inc, 2011 FC 436 at para 34; Apotex Inc v Sanofi-Aventis, 2010 FC 182 at para 10; Rovi Guides, Inc v Videotron GP, 2019 FC 1220 at paras 53–54, aff’d 2019 FCA 321 at paras 18–19. This will not always be the case, and it will not always be the case that any such prejudice cannot be compensable in costs or will not be justified in the circumstances. Much, if not all, depends on the circumstances of the case.
[47] In the present case, the parties have conducted extensive documentary and examinations for discovery, and have agreed to trial dates and pre-trial schedules to prepare the matter for a two-week trial that is scheduled to proceed about three years after commencement of the action. Adjourning the trial again, necessarily for a period of multiple months, would cause further delay in the proceeding. In the circumstances, I agree there is at least an element of such further delay that could not be compensated in costs. I also reject GEREC’s argument that its concession that the amendments would require adjourning the trial means allowing them will cause no non-compensable prejudice. Further, such adverse effects would be in service of amendments that would not assist the Court in determining the true substance of the dispute on its merits.
[48] I agree with GEREC that its proposed amendments will not require Canmec or Rio Tinto to change or modify a position they have already taken. However, in the circumstances, I do not believe this consideration outweighs the other issues and factors discussed above.
[49] Based on the foregoing factors, I conclude it would not be in the interests of justice to grant GEREC leave at this stage in the proceeding to amend the Amended Statement of Claim to add the 254 works that are other versions or revisions of the 33 Works. These requested amendments are refused.
(b) Other manufacturing drawings [50] GEREC’s proposed Schedule A also includes two manufacturing drawings that are not represented in the 33 Works: one of the general assembly of the valve, and one of an “anti-debris plate,” a component of the original hydroelectric units and a required aspect of the refurbishment project under the RFQ. Multiple versions of the two drawings are listed for each of the Unit 1 project and the Unit 2 project, for a total of 17 works alleged to have been infringed.
[51] For the same reasons given above, I am satisfied the proposed amendments adding these documents to the definition of the GEREC Designs are adequately pleaded and meet the threshold question of presenting a reasonable cause of action. Each document is again a single page of manufacturing drawings. Given the similarity between the nature of these two drawings and those contained in the 33 Works, Justice Grammond’s conclusions regarding the adequacy of the particularization also applies in respect of these works.
[52] However, I again conclude the proposed addition of the 17 versions of these two drawings to GEREC’s allegations of infringement, or even only one version of each, would not be in the interests of justice.
[53] GEREC presented few, if any, different arguments with respect to these works and why it was necessary or appropriate to add them to the definition of GEREC Designs at this stage in the proceeding. It did, however, present evidence that a version of one of the drawings (Revision E of the general assembly drawing related to Unit 1, listed on Schedule A as A‑005) was sent by Rio Tinto to Canmec by email in February 2019. This email was produced by Canmec in March 2024 in response to Question 261. GEREC points to this recent production as evidence that it learned only recently about the extent to which Rio Tinto shared GEREC documents with Canmec.
[54] However, as Canmec points out, Revision C of the same general assembly drawing (A-004) was attached to Rio Tinto’s request for proposals in respect of the winches for the Unit 2 pilot project in March 2018. GEREC therefore knew or ought to have known that Canmec had this drawing well before the commencement of the litigation. Further, the documents Canmec produced in response to answers to undertakings after the first round of discoveries in late June 2023 included a document showing that Rio Tinto sent Revision B of the same general assembly drawing (listed on Schedule A as A-003) to Canmec in June 2017 in the context of its work on the winches for the pilot project. As a result, even in the context of this litigation, GEREC has known since at least late June 2023, well before the first discovery motion and well before its first motion to amend, that Rio Tinto had sent Canmec a copy of the general assembly drawing. It is therefore difficult to credit GEREC’s assertion that the March 2024 production of the February 2019 email constituted a recent disclosure that the general assembly drawing had been shared with Canmec.
[55] As for the anti-debris plate drawing, GEREC has not identified any evidence that Canmec ever had this document, either from Rio Tinto or otherwise. While possession or access to a work is not a requisite element of a copyright infringement allegation, GEREC’s allegations that Canmec infringed its copyright in the GEREC Designs are expressly based on Canmec’s possession and use of copies of those works (paragraphs 18, 23, 27–29, and 32 of the Amended Statement of Claim). GEREC’s proposed allegations that Rio Tinto infringed copyright in the GEREC Designs are based on Rio Tinto having shared the GEREC Designs with Canmec (paragraphs 27, 37.1–37.11 of the proposed Second Amended Statement of Claim). GEREC has conducted examinations for discovery and has obtained disclosure from Canmec of all GEREC documents that were in Canmec’s possession, but has pointed to no evidence, let alone recent evidence, showing Canmec had the anti-debris plate drawing.
[56] As noted above, while factual allegations in a pleading are generally taken as true for purposes of a motion to amend, I am not convinced that this principle should apply with as much force where the parties have conducted discovery and the proposed factual allegation is contrary to the evidence before the Court. I accept that a motion to amend is not the place to weigh conflicting evidence. However, this is not a case of weighing conflicting evidence but of considering whether, after two rounds of examinations, GEREC has shown its proposed allegation to have any factual foundation. In any case, GEREC’s motion does not point to any new information acquired in the discovery process that would justify raising at this stage in the litigation a new allegation that Canmec infringed copyright in the anti-debris plate drawing. The mere allegation that Rio Tinto’s sharing of documents with Canmec was wider than previously known (an allegation addressed further below) is insufficient justification, when that sharing did not include the drawing in question.
[57] I therefore conclude that, as with GEREC’s request to add the other versions of the 33 Works, its request to add allegations of infringement of the general assembly drawing and the anti-debris plate drawing is not timely.
[58] Nor, in my view, will the proposed amendments with respect to these two drawings facilitate the Court’s consideration of the substance of the dispute on its merits. Again, GEREC has not satisfied me that its proposed amendments would assist in considering the core of its copyright infringement allegations, or affect the remedies it may obtain if successful in demonstrating such infringement. At best, the general assembly drawing shows a different view of the butterfly valve depicted in the 33 Works, while the anti-debris plate shows a detail of a component. GEREC has been unable to explain why or how adding allegations with respect to these drawings would assist in facilitating the Court’s consideration of the dispute or of the real questions in controversy.
[59] Conversely, adding at this stage in the process new allegations of infringement of two further drawings of the butterfly valve and its components would risk delaying the trial. While the addition of two new drawings (whether in the form of two exemplary works or of the 17 works that constitute all of the various revisions) might not in other circumstances amount to a significant expansion of the scope of the action, the parties are already under tight timelines to complete the necessary pre-trial steps before the trial scheduled in October 2024, despite the trial date having been fixed almost eight months ago. Even the addition of the single day of discovery Canmec estimates would be required to question GEREC on these documents would delay the production of expert reports, with knock-on effects that put the trial date very much at risk, for the sake of allegations that would add little value to the claim.
[60] As a result, and despite the fact that these amendments will not require Canmec or Rio Tinto to change any position they have taken, I conclude that allowing GEREC to amend its claim to add allegations of infringement of the general assembly drawing and the anti-debris plate drawing would not be in the interests of justice.
(c) The SolidWorks File [61] The SolidWorks File is a computer file that shows a 3D CAD model of GEREC’s butterfly valve and its component parts, as well as other aspects of the hydropower unit such as the winches and the concrete in which they are installed. As represented in a video filed by Rio Tinto, the SolidWorks File allows a user to view these various elements in three dimensions at various levels of detail, rotate them across three axes, create and view cross-sections, hide elements the user does not want to see, and/or