Canadian Olympic Assn. - Assoc. Olympique Canadienne v. Usa Hockey Inc., 2001 FCA 32

Date: 20010222

Docket: A-472-97

Citation: 2001 FCA 32

BETWEEN:

     CANADIAN OLYMPIC ASSOCIATION-

     ASSOCIATION OLYMPIQUE CANADIENNE

     Appellant

     (Plaintiff)

     - and -

     USA HOCKEY INC. and

     THE REGISTRAR OF TRADE-MARKS

     Respondents

     (Defendants)

     ASSESSMENT OF COSTS - REASONS

CHARLES E. STINSON

[1]      A copy of these Reasons are filed today in Court file T-1316-96 and apply there accordingly. The action in Court file T-1316-96 sought a declaration that the decision of the Registrar of Trade-marks to give public notice of the adoption and use by the Defendant USA Hockey, Inc. (hereafter USA Hockey) of the official mark, USA Hockey, was void ab initio and an order quashing said decision. Upon application by USA Hockey, the Court struck the Statement of Claim with costs on June 13, 1997. On October18, 1999, the Federal Court of Appeal dismissed, with costs, the appeal of the Appellant (Plaintiff)(hereafter, the Appellant) from the Trial Division's decision. USA Hockey presents a bill of costs in each file with these items in issue for assessment at the party and party level:

     A-472-97      I      Assessable Services

Item	Description	Column	Units	Hours	Amount
19	Memorandum of fact and law	III	6		$600.00
22	Counsel fee on hearing of Appeal - 18 Oct 99	III	3	3.8	$1,140.00
26	Assessment of Costs	III	6		$600.00
	TOTAL FOR ASSESSABLE SERVICES:				$2,340.00

    

             II      Disbursements

Item	Description				Amount
1	Photocopying and binding charges for 8 books of authorities				$403.92
	...
	TOTAL DISBURSEMENTS:				$1,944.07
	TOTAL FOR SERVICES AND DISBURSEMENTS:				$4,284.07

            

     T-1316-96      I      Assessable Services             

Item	Description	Column	Units	Hours	Amount
5	Preparation and filing of a contested motion including materials and responses thereto Defendant's motion to strike the Statement of Claim (11 Feb 97)	III	7		$700.00
6	Appearance on a motion, per hour...(11 Feb 97)	III	3	3.4	$1,020.00
8	Preparation for cross-examination of Judge Lindberg (a) Cross-examination of 23 Sep 96 (b) Cross-examination of 11 Nov 96	III III	5 3		$500.00 $300.00
9	Attendance at cross-examination of Judge Lindberg (a) Cross-examination of 23 Sep 96 (b) Cross-examination of 11 Nov 96	III III	3 3	1.0 2.5	$300.00 $750.00
26	Assessment of Costs	III	6		$600.00
	TOTAL FOR ASSESSABLE SERVICES:				$4,170.00

     II      Disbursements

Item	Description				Amount
	...
3	Charges for Computer Searches (legal research and trade-mark searches)				$114.71
	...
6	Binding charges (Books of Authorities and Facta for motion of 11 Feb 97)				$90.00
	...
8	Travel Charges: ... (b) Judge Lindberg: Minneapolis/Toronto/Minneapolis for attendance at cross-examination - 23 Sep 96 Airfare Taxi/ParkingMeals c) Judge Lindberg: Minneapolis/Toronto/Minneapolis for reattendance at cross-examination - 11 Nov. 96 Airfare Taxi/Parking				$497.68 $157.91 $1,314.68 $49.83
9	Cross-examination of Judge Lindberg (a) Official Examiner's Fee - 11 Nov 96 cross-examination (b) Copy of transcript - 23 Sep 96 cross-examination (c) Copy of transcript - 11 Nov 96 cross-examination				$50.50 $47.00 $74.25
	TOTAL DISBURSEMENTS:				$4,833.05
	TOTAL FOR SERVICES AND DISBURSEMENTS:				$9,003.05

The Appellant's Position

[2]      The Appellant asserted that the issues for assessment were: (a) the number of units claimed for all fee items is too high; (b) any costs associated with the re-attendance on November 11, 1996 by Judge Peter J. Lindberg for cross-examination on his affidavit, in support of the motion to strike, are not assessable and (c) in-house binding and computer searches are not assessable.

[3]      The Appellant noted that there were a parallel action (T-1315-96) and a parallel appeal (A-471-97), both heard at the same time as the motion to strike and the appeal respectively for the mark, USA Hockey, but addressing the mark, USA Basketball. The costs for the USA Basketball proceedings are not in issue here. However, the Appellant argued that item 6 here should be reduced by 1.7 hours because part of the 3.4 hours claimed addressed the USA Basketball action. The Appellant asserted that the motion to strike, raising simple issues, was straightforward and required only a supporting affidavit of two pages essentially listing and attaching correspondence. The Court's Reasons were neither complex nor detailed. The motion itself listed only four grounds and both Courts made findings only in terms of the first listed ground, ie. no reasonable cause of action. This motion was the only step taken in this litigation. An appeal from an order striking a pleading is not a subsequent step warranting higher costs. This was not a complex trial of the issues of the action. The Appellant proposed 4 units and 2 units (for 1.7 hours) for items 5 and 6 respectively.

[4]      For item 8, the Appellant proposed 2 units only and argued that 5 units are excessive to prepare for the September 23, 1996 cross-examination of a two page affidavit resulting in 21 pages of transcript. For item 9, the Appellant proposed 1 unit for September 23, 1996 and noted that the actual attendance was likely less than the 1 hour claimed. The Appellant argued that, per Denharco Inc. v. Forespro Inc.¹ and Canadian Tire Corp. v. Foxco Ltd. et al,² the high end of column III is permissable only if the Court so directs. Alternatively, the Appellant argued that USA Hockey has not discharged its onus to lead evidence establishing difficult facts and issues warranting the upper end of ranges in column III. The Affidavit of Kathryn A. Lipic sworn November 8, 2000, addressing alleged conduct of the Appellant tending to delay the assessment process, is not properly before the Court because it was served on the day of the assessment, ie. insufficient notice. As well, it is irrelevant with respect to Rule 400(3)(i) because the phrase therein, "duration of the proceeding", does not refer to the duration of the assessment. That is, Rule 400(3)(i) refers to the action itself, but not the assessment. The Appellant asserted that it had no control over the pace at which USA Hockey chose to pursue its recovery of costs.

[5]      For item 8 and 9 fees addressing November 11, 1996, the Appellant argued that the Tariff does not provide for re-attendance and therefore those fees of $300.00 and $750.00 respectively, together with the associated disbursements of $1,314.68, $49.83, $50.50 and $74.25, are not assessable. If Judge Lindberg had answered the questions as he should have on September 23, 1996, the re-attendance directed by the September 30, 1996 Order would not have been necessary. That Order was silent on costs and therefore the ordinary provisions of the Tariff apply absent any special dispensation by the Court applied for and received. The Appellant noted that counsel for USA Hockey himself misunderstood the Order as demonstrated by this excerpt, "whereby the A.S.P. directed Mr. Peter J. Lindberg re-attend, at his own expense or at the expense of the Defendant USA Hockey, Inc.", from its motion dated October 8, 1996 to set aside the September 30, 1996 Order. The Appellant argued that the silence of the September 30, 1996 Order on costs constituted the "otherwise" provision in Rule 86 and therefore the Appellant was not obligated to pay for USA Hockey's copy of the November 11, 1996 transcript.

[6]      The Appellant applied its rationale above to fee items 19, 22 and 26 in Court file A-472-97 and proposed 5 units, 2 units and 2 or 3 units respectively. In particular, it noted that the USA Basketball appeal was heard at the same time. For disbursements, the Appellant argued that the $90.00 for binding in the trial bill of costs and the binding portion of the $403.92 in the appeal bill of costs were in-house costs according to the evidence and therefore, being part of overheard, are not assessable. In particular, the $90.00 claim is excessive given the size of the materials. The Appellant made the same argument for the $114.71 for computer searches in the trial bill of costs. Generally, USA Hockey has not discharged the onus to lead sufficient evidence on necessity contemplated by Pharmacia Inc. v. Canada (Minister of National Health and Welfare)³.

USA Hockey's Position

[7]      USA Hockey argued that the motion to strike required consideration of the allegations raised in the Statement of Claim, including consideration of the several remedies sought in the prayer for relief. Rule 400(3) lists many factors, in addition to complexity, which are relevant on an assessment of costs. For example, relative to Rule

400(3)(a) concerning the result of the proceeding, both Courts concluded that there was no authority for the Appellant to have proceeded as it did. USA Hockey noted that the motion to strike had an alternative demand for particulars and costs. The Court took the motion to strike under reserve and directed that the parties file written submissions within 30 days. The Court then considered and rejected each allegation and remedy in turn. USA Hockey argued that, relative to Rule 400(3)(o) permitting the consideration on assessment of any matter considered relevant, the Court's decision noted the absence of legislative authority for this litigation and the Appellant's failure to plead material facts. USA Hockey argued that the Court's recognition that the Appellant proceeded incorrectly is relevant relative to Rules 400(3)(i) and (k) and therefore costs for every step should be assessed with that in mind.

[8]      For item 6, USA Hockey noted that its records disclose 3.4 hours as the duration. For item 8 for September 23, 1996, USA Hockey argued that, as the statements in the Lindberg affidavit were innocuous, it was that much more difficult to prepare for a cross-examination by one's opponent because it was necessary to anticipate almost anything. The transcript was brief because many of the Appellant's questions were beyond the scope of a cross-examination on an affidavit. That is, this was not a discovery process. USA Hockey argued that the decisions of the Trial Division and the Federal Court of Appeal both imply in hindsight that the questions for which answers were refused were improper in the first instance. USA Hockey noted that only the mid-range of 3 units was claimed for item 8 for November 11, 1996 because less preparation than that for September 23, 1996 was required.

[9]      For item 9, USA Hockey argued that, as the Appellant's motion for re-attendance by Judge Lindberg at his own expense or at the expense of USA Hockey to answer questions refused on September 23, 1996, resulted in the September 30, 1996 Order compelling said re-attendance, but silent on costs including costs of the day, the Court had impliedly refused that portion of the motion concerning the costs of re-attendance. Therefore, Rules 87(c) and 89(1) apply, ie. as the Appellant was the party conducting the cross-examination, it was responsible for those costs. As Judge Lindberg resides in Minnesota, travel disbursements were necessary. USA Hockey noted that these costs were included in the bill of costs because the Appellant has yet to pay them as prescribed by the Rules.

[10]      For item 19 in the Federal Court of Appeal, USA Hockey argued that the memorandum of fact and law disclosed several pages of issues requiring preparation as well as the consideration of a number of cases and statutory provisions. The Federal Court of Appeal was dismissive of the Appellant's approach. USA Hockey argued that this litigation raised important and complex issues requiring considerable work relative to Rules 400(3)(c) and (g) warranting the upper end of column III fees. The Lipic affidavit disclosed conduct by the Appellant, in terms of Rule 400(3)(i), tending to lengthen the assessment process and therefore warranting the upper end of the range for item 26. USA Hockey noted that item 26 was added after the draft bills in the supporting materials were prepared. USA Hockey argued that the Denharco Inc. and Canadian Tire Corp., decisions, supra, do not establish that assessment in the upper end of ranges requires a prior direction of the Court. Rather, Rules 400(1), (3) and (5) apply and the assessment officer has the requisite authority.

[11]      USA Hockey argued that its supporting materials provided sufficient detail and justification for the disbursements. USA Hockey noted that the Pharmacia Inc., decision supra @ paragraphs [48]-[52] approved computer searches as an appropriate disbursement in costs. The supporting affidavit in A-472-97 discloses that the $403.92 in issue was paid to a third party.

Assessment

[12]      In Carpenter Fishing Corporation et al v. Queen et al⁴, I concluded that the same point in a range of units need not be assigned for each fee item in turn. For example, in the present trial bill of costs, the lower end of the range for item 5 and the upper end of the range for item 6 are possible results. At paragraph [24] of Carpenter Fishing Corporation, supra, I noted that some ranges require broad distinctions between their upper and lower sections or limits. Generally, I did not find this litigation to be particularly difficult or complex. But there were varying elements of difficulty from step to step. The conclusions in Denharco Inc. and Canadian Tire Corp., supra, were a function of the Court's full discretion under Rule 400(1), but they do not in any way preclude me from applying the upper end of ranges under Rule 407. Rules 407 and 409 do not require a prior direction of the Court. Generally, I have applied the precepts of Carlile v. Queen⁵, in this assessment.

[13]      I allow 6 units for item 5. I allow 2 units per hour for item 6, but for only 1.7 hours. The Abstract of Hearing from Court file T-1315-96 (USA Basketball) disclosed that its motion to strike was heard in the same time frame. In the absence of material demonstrating otherwise, I assume the time for each file was split equally within the 3.4 hours. I allow the 6 units claimed for item 19. As above, the Abstract of Hearing from Court file A-471-97 (USA Basketball) disclosed that its appeal was heard in the same time frame, and in the absence of material demonstrating otherwise, I assume the time for each file was split equally within the 3.8 hours for item 22. I allow 3 units per hour for item 22, but for only 1.9 hours.

[14]      My conclusions in Carpenter Fishing Corporation et al, supra, @ paragraph [19] and Local 4004, Airline Division of Canadian Union of Public Employees v. Air Canada (T-323-98 on March 25, 1999) @ paragraph [7] provided for the possibility of an allowance for fresh preparation in given circumstances of multiple examinations, but not necessarily re-attendance. The silence of the September 30, 1996 Order concerning costs cannot be read as an active intervention precluding the ordinary obligation under the Rules for the party requesting and conducting an examination to assume responsibility for costs. The silence on costs in the September 30, 1996 Order goes to, in my opinion, the event of the Appellant's September 25, 1996 motion for re-attendance. That is, it precludes a claim by either side for associated costs relative to item 5 and 6 fees and related disbursements. It did not, however, make an active direction concerning the event of cross-examination on Judge Lindberg's affidavit to which item 8 and 9 fees and associated disbursements apply. I view the September 23 and November 11, 1996 attendances as part of the same cross-examination, albeit disjointed. In the circumstances, I allow only a single item 8 at 4 units. For item 9, I allow 1 hour on September 23, 1996 at 1 unit per hour and 2.5 hours on November 11, 1996 at 2 units per hour.

[15]      Consistent with my rationale above, I allow the disbursements associated with the November 11, 1996 cross-examination. In the trial bill of costs, the proof for the binding charges is less than absolute and contains no real detail. Consistent with Carlile and Local 4004, supra, I allow only $40.00 of the $90.00 claimed. My view, supported in Pharmacia Inc. supra, is that computer-assisted research is a new and assessable area in the practice of law. The proof here lacks detail. I allow $95.00 of the $114.71 claimed. In the appeal bill of costs, the evidence of the third party supplier relative to the $403.92 for photocopying and binding is scanty, but I find the cost reasonable for the service provided and I allow it as presented. Finally, for item 26 to assess costs, I allow 3 units in Court file A-472-97 and 3 units in Court file T-1316-86.

[16]      In Court file A-472-97, the bill of costs of USA Hockey, presented at $4,284.07, is assessed and allowed at $3,414.07. In Court file T-1316-86, the bill of costs of USA Hockey, presented at $9,003.05, is assessed and allowed at $7,003.34.

     (Sgd.) "Charles E. Stinson"

     Assessment Officer

---

     FEDERAL COURT OF CANADA

     APPEAL DIVISION

     NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:          A-472-97

STYLE OF CAUSE:      Canadian Olympic Association - Association Olympique Canadienne vs. USA Hockey Inc. et al

PLACE OF HEARING:      Ottawa, Ontario

DATE OF HEARING:      November 8, 2000

ASSESSMENT OF COSTS - REASONS OF:      Charles E. Stinson

DATED:      February 22, 2001

APPEARANCES:

Kenneth D. McKay      FOR THE APPELLANT (PLAINTIFF)

Jeremy E. Want      FOR RESPONDENT (DEFENDANT) USA HOCKEY INC.

SOLICITORS OF RECORD:

Sim, Hughes, Ashton & McKay      FOR APPELLANT (PLAINTIFF)

Toronto, Ontario

Smart & Biggar      FOR RESPONDENT (DEFENDANT) USA HOCKEY INC.

Ottawa, Ontario

__________________

¹      86 C.P.R. (3d) 472 @ 481, paragraph [31] (T.D.)

²      4 C.P.R. (4^th ) 482 @ paragraph [9](T.D.)

³      1999 Carswell Nat 2244 (T-2991-93, A.O.) @ paragraph [48]

⁴      A-941-96 on March 23, 1999 @ paragraph [15]

⁵      97 D.T.C. 5284