Positive Attitude Safety System Inc. v. Albian Sands Energy Inc., 2004 FC 1022

Date: 20040723

Docket: T-1052-01

Citation: 2004 FC 1022

Ottawa, Ontario, this 23^rd day of July, 2004

Present:           THE HONOURABLE MR. JUSTICE SIMON NOËL

BETWEEN:

                                      POSITIVE ATTITUDE SAFETY SYSTEM INC.

JAMES S. BURNS and CLAIRE BURNS

Plaintiffs

and

ALBIAN SANDS ENERGY INC.

and

JEFF STIBBARD

Defendants

                                            REASONS FOR ORDER AND ORDER

I.           INTRODUCTION

[1]                This is a motion by the defendants, Albian Sands Energy Inc. ("Albian Sands") and

Jeff Stibbard ("Mr. Stibbard"), for summary judgment pursuant to Rules 213 to 219 of the Federal Court Rules, 1998 against the plaintiffs, Positive Attitude Safety System Inc. ("PASS Inc. ") as well as James S. Burns ("Mr. Burns") and Claire Burns ("Ms. Burns") .

[2]                The defendants seek a motion for an Order pursuant to Rule 216 for summary judgment dismissing:

i)          the plaintiffs' claim of passing off by Albian Sands, as alleged in paragraphs 1 and 28 of the plaintiffs' Amended Statement of Claim;

ii)         the plaintiffs' claim of copyright infringement based on the plaintiffs' allegation that the defendants have sold, rented out, exposed and offered for sale rental of the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials or a substantial portion of one or more of the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials, as alleged in paragraphs 1 and 27 of the plaintiffs' Amended Statement of Claim;

iii)         the plaintiffs' claim of copyright infringement based on the plaintiffs' allegation that the defendants have performed or have caused Albian Sands' employees to perform substantial portions of one or more of the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials in public, as alleged in paragraphs 1 and 27(d) of the plaintiffs' Amended Statement of Claim;

iv)        the plaintiffs' claim of copyright infringement with respect to each of or any of the following works:

                        a)          ALBIAN SANDS ENVIRONMENT AND SAFETY SYSTEM (ASESS) Daily Action Form;

b)         ASESS Daily Quality Check Form;

c)         ASESS Daily Meeting Notes Form;

d)          ASESS HSE Tool#3;

e)          ASESS Barrel Discussion Charts; and

f)           Albian Sands General Hazard Awareness & Recognition Handbook.

v)          Such further and other Order as to this Honourable Court may seem just.

[3]                The plaintiffs in response seek an Order dismissing the defendants' motion and awarding costs to the plaintiffs in any event of the cause as well as a summary judgment in their favour declaring that the defendants have infringed the plaintiffs' copyright in the POSITIVE ATTITUDE SAFETY SYSTEM and PASS Materials and have contravened s. 7(b) and (c) of the Trade-marks Act, RSC 1985, c. T-13 ("TMA").

II.        ISSUES

[4]                According to the defendants, the main point in issue and sub-issues for determination are:

i)          Whether or not there is a genuine issue for trial with respect to the plaintiffs' claims relating to Albian Sands' alleged passing off of the plaintiffs' POSITIVE ATTITUDE SAFETY SYSTEM and PASS trade-marks ("PASS trade-marks") and copyright infringement of various written materials produced by the plaintiffs ("PASS materials"), in respect of which copying or substantial copying by the defendants has been alleged.

ii)         The sub-issues are essentially to determine, as stated in the defendants' Notice of Motion, whether or not the plaintiffs have any genuine issues with respect to:

a)          passing off by Albian Sands;

b)          the defendants having sold, rented out, exposed and offered for sale or rental the PASS Materials;

c)         the defendants having performed or having caused Albian Sands' employees to perform substantial portions of one or more of the PASS Materials in public; and

d)          the enumerated works being a copy or substantial copy of the PASS Materials.   

[5]                For the plaintiffs the points in issue to be determined are as follows:

i)                     Is there a genuine issue for trial in respect of the following plaintiffs' claims of:

a)          passing off;

b)          secondary copyright infringement under s. 27(2)(c) of the Copyright Act, R.S. 1985 c. C-42, ("CA"); and

c)          copyright infringement under s. 3 and 27(2) of the CA by way of substantial reproduction of the PASS Material.

[6]                However, having reviewed some of the jurisprudence regarding motions for summary judgment and to assist in comprehension, I am of the opinion that, for the purposes of this motion, the issues as submitted by the parties should essentially be considered as the following single general issue: is there a genuine issue to be tried with respect to the parties' submissions in this motion? If this question is answered in the affirmative and consequently there is a genuine issue to be tried, it will become necessary for the Court to determine whether there is sufficient evidence to decide the questions of fact and law raised by the defendants' motion. If this question is answered in the negative and there are no genuine issues to be tried, then a summary judgment will be granted.

III.        FACTS

[7]                The facts will be presented in the following sequence:

A.         Facts agreed on by both parties;

B.          Facts in dispute; and

C.         Underlying facts.

A.         Facts agreed on by both parties:

[8]                Both parties agree that:

i)           PASS Inc. is in the business of consulting to heavy industries in the area of worker and employee safety. As such it licences its clients to use a safety system for enhancing workplace safety which includes supporting materials such as safety manuals and handbooks, flow charts and guides, reporting and assessment components and shift charts;

ii)          PASS Inc. calls this system and supporting materials the POSITIVE ATTITUDE SAFETY SYSTEM and PASS;

iii)          BHP Diamonds Inc. ("BHP Diamonds") is a subsidiary of BHP World Minerals (BHP World) and operates the Ekati Mine Site in the Northwest Territories, Canada;

iv)         in June 1997, Mr. Stibbard, the BHP Diamonds' Mine Manager at the Ekati Diamond Mine near Yellowknife, toured BHP World's Cannington Mine in Australia and was exposed to its POSITIVE ATTITUDE SAFETY SYSTEM and PASS safety system and materials;

v)          in 1997 a PASS handbook utilised at the Cannington Mine was left with Mr. Stibbard at the Ekati mine;

vi)         in 1997/1998, Mr. Stibbard implemented PASS materials at the Ekati mine with a modified version of the Cannington PASS Handbook;

vii)         in November 1998, Mr. Stibbard was seconded to the Muskeg River Project, a joint venture of BHP Diamonds and Shell Canada that was engaged in the extraction of oil from tar sands;

viii)        in about January 1999, Mr. Stibbard implemented PASS at the Muskeg River Project using copies of handbooks from the Ekati mine;

ix)         in April 1999, BHP Diamonds announced that they were intending to pull out of the Muskeg River Project in September, 1999;

x)          in September 1999, Mr. Stibbard became a Western Oil Sands employee; and

xi)         in October 1999, Albian Sands, a joint venture including partners Shell Canada, Western Oil Sands and Chevron Canada, continued the development of the Muskeg River Project, and continued to use the safety system there in place.

B.         Facts in dispute:

[9]                However, the parties do not agree on whether or not:

i)                     PASS Australia licensed BHP World, to use PASS Inc.'s POSITIVE ATTITUDE SAFETY SYSTEM and PASS safety system at its Cannington mine in Australia with the provision that BHP World could use without restriction any materials developed or created during the course of the project;

ii)                    on January 29^th, 1998, PASS Inc. licensed BHP Diamonds to use its POSITIVE ATTITUDE SAFETY SYSTEM (PASS) as well as the materials at all locations throughout Canada (although the agreement was co-signed on March 3^rd, 1999) and, that in doing so, PASS Inc. gave BHP Diamonds the right to reproduce and modify any materials provided relating to their system or process for use at all BHP Diamond's locations;

iii)                  from October to November 1999, Albian Sands continued to use the materials and the safety system as well as distribute the PASS materials at the Muskeg River site without a license;

iv)                  in November 1999, Mr. Stibbard and others working at Albian Sands created and wrote the ALBIAN SANDS ENVIRONMENT AND SAFETY SYSTEM (ASESS), a new safety system to replace the one initially implemented by Mr. Stibbard for use at the project;

v)                   upon introduction of ASESS in November 1999, all reference to POSITIVE ATTITUDE SAFETY SYSTEM as well as PASS was discontinued and only ASESS was used at the project;

vi)                  in March 2000, John Currie ("Mr. Currie"), who was a safety manager with a contractor at Albian Sands named KMC and was familiar with PASS, was introduced to ASESS and is told it is approved by PASS. He found ASESS so similar to PASS that he thought it was PASS;

vii)                in June 2000, John Currie contacted Mr. Burns, who first wrote the PASS materials with his wife in 1992, and provided him with ASESS materials. The action was commenced after which the defendants destroyed the remaining PASS materials in their possession; and

viii)               the defendants have never commercially exploited ASESS.

C.         Underlying facts:

[10]            In order to understand the intricacies of the issues raised by the present motion, it is important to understand the following underlying facts.

i)           The parties;

ii)          The PASS system; and

iii)          The ASESS system.

I)          The Parties:

[11]            Mr. Burns is a safety consultant who has had an interest in safety programs since 1982. Mr. Burns has a university degree in psychology and his post-graduate work was in counselling psychology. He, along with his wife (the other plaintiff in this matter) Ms. Burns, wrote a book and had was published in April 1992. The topic of the book was the "Positive Attitude Safety Systems" ("Pass System"). The "PASS" acronym became a non-registered trade mark and the PASS System was given a registered literary copyright on March 10^th, 1994. The PASS System was developed over a period of several years.

[12]            The corporate plaintiff, PASS Inc. was incorporated in 1993 and Mr. and Ms. Burns became employees of the corporate entity by agreement dated December 15^th, 1993. An assignment of all the rights in the PASS System was given to PASS Inc. At that time, the PASS System was implemented with clients with the signing of a license agreement for use and reproduction of the PASS System for a fee based on the number of employees, and a defined rate for implementation and verification of the System. PASS Inc. operates in Australia, Canada and New Zealand.

[13]            The defendant Mr. Stibbard, who is now self employed (as of March 8^th, 2004), was the General Manager for Safety and Mine Operations for BHP Diamonds and for the corporate defendant's leadership team. In 1997, Mr. Stibbard became aware of the PASS System and received a copy of the handbook in the months following his employment at the BHP Diamond Ekati Mine located in Yellowknife. In late 1998 or early 1999, Mr. Stibbard developed a safety system which "basically" replicated the PASS System (see cross-examination of Mr. Stibbard dated March 8^th, 2004, page 9, lines 39 to 40). This replica of the PASS System was used under the name BHP/Ekati PASS handbook without a license and with the copyright markings removed. In November 1998, Mr. Stibbard was seconded to another project in which BHP Diamonds had a 25% interest in Fort McMurray, Alberta. In January 1999, Mr. Stibbard distributed the BHP/Ekati PASS handbook to employees and contractors. Whether or not a license to use and distribute the PASS System was in existence for the Muskeg River Project is being disputed by the parties.

[14]            In October 1999, Albian Sands became the operating entity of the Muskeg River project which included a joint venture between Shell Canada, Western Oil Sands and Chevron Canada and, as previously mentioned, Mr. Stibbard was the corporate defendant's General Manager for Safety and Mine Operations. For a period of more than two months, Mr. Stibbard and Albian Sands photocopied and distributed the BHP/Ekati PASS handbook, as they had done previously, to employees and contractors such as KMC, Fluor Daniel, North American Construction, The Fort MacKay Group and Cross Contracting. Fluor Daniel did not utilize the PASS system, but the other contractors did. No license that was specific to this site was granted by PASS Inc. to authorize the implementation and use of the PASS system.

[15]            Furthermore, the corporate defendant allegedly created another safety program because it did not want to pay for use of the PASS System and because it had been served with the statement of claim in these proceedings, which created legal issues for them (see cross-examination of Mr. Stibbard dated March 8^th, 2004 at para. 19, lines 11 to 17; and page 22, lines 8 to 16). According to the corporate defendant, Mr. Stibbard and Albian Sands produced ASESS in less than a month with the collaboration of some employees, which they used to "replace" the PASS System. Mr. Stibbard admitted during his cross-examination that he had kept the PASS System material in front of him while he drafted ASESS.

ii)          The PASS system:

[16]            The PASS System puts emphasis on a positive management approach that seeks to elicit positive feedback on safety performance. While other, more traditional safety systems exist, such as the International Loss Control Institute ("ILCI"), the PASS System is basically worker-driven in that it gets miners to discuss their situations among themselves with a supervisor present and by having the employees asking questions. It is a totally different concept from that of the traditional "top down" safety programs. It is a "bottom-up" safety program where management eventually gets involved instead of initiating the system. The PASS System works because it is employee driven and not management imposed (see cross-examination of Mr. Currie dated April 5^th, 2004, page 19 and 28 - Mr. Currie was a Safety and Human Resources Coordinator for a mining contractor involved in the Albian Sands Project).

[17]            All of the key PASS System tools are encompassed in a handbook which is a distillation of the overall system and which has the advantage of being easy for employees to consult. The PASS System includes among other items: a PASS safe day chart, a PASS report down safety chart, a PASS safety improvement white board and a PASS safety discussion flow chart. In Mr. Burns's opinion the safety flow chart, which establishes a series of questions for the "safety huddle", the safe day chart and the safety improvement white board are the key control components of the PASS system.

iii)         The ASESS system:

[18]            The ASESS System is a daily qualitative review process in which the philosophical concept is that safety is about behaviour. This system relies on morning employee "huddles", where questions are asked by employees and charts or white boards are relied upon. It is the defendants' position that the forms, which make up the ASESS System and include the ASESS daily action form, ASESS daily quality check form, ASESS daily meeting notes form, ASESS H.S.E. Tool #3, ASESS barrel discussion charts, as well as the Albian Sands General Hazard and awareness and recognition handbook, are not substantially similar to the charts, white boards and handbook which make up the PASS System. The defendants further claim that there are similarities, but they are not such that ASESS could be considered a mere replicate of the PASS System.

[19]            Having said that, Mr. Currie, who is knowledgeable in mining safety systems, was on site when the ASESS System was distributed to Albian Sands' employees and contractors. Under cross-examination, he stated his opinion that ASESS was similar to the PASS System, but that it had a different name. When looking at the ASESS material and the charts and boards on the wall and how the meetings (huddles) were conducted, he first thought that it was the PASS System but bearing the name ASESS, but then realised that some questions asked were in fact different. He noted that the spin given to questions under the PASS System was of a positive nature, while the similar questions asked under ASESS had a negative tone. However, overall, he felt that in essence the PASS System was being reproduced by the defendants. During the same cross-examination, Mr. Currie said that he had mentioned to Mr. Stibbard and Mr. Brown (an Albian Sands' employee) that the ASESS System looked like the PASS System upon which he was told that it was correct for Albian Sands to use " ... this system" (see cross-examination, Mr. Currie, page 20).

[20]            Also during cross-examination, Mr. Currie said that his employer ("KMC") discussed the possibility of using the ASESS System at all of their work sites but, because of the resemblance to the PASS system, they had concerns about copyright issues which the employer felt he should investigate further and report back to the management of his company.    Subsequently, in the Fall of 2002, KMC implemented the PASS System at two Canadian projects.

IV.        LAW AND JURISPRUDENCE

a)         law and jurisprudence on summary judgment

[21]          In two recent decisions (MacNeil Estate v. Canada (Indian and Northern Affairs

Department), [2004] FCA 50 and Trojan Technologies Inc. v. Suntec Environmental Inc.,[2004] FCA 140), the Federal Court of Appeal seems to have clarified the motion judge's role when dealing with summary judgment and has made it a point to specify that if ever credibility was at stake, the matter had to be referred to a trial judge who would be in a better position to make a final determination. But what appears to be new ground on the part of the Court of Appeal is the concern that motion judges would not know if they had all the evidence or "sufficient evidence" in order to conclude and make a final determination once there is a finding on whether the issue is genuine because, even though the responding party on summary judgment had to put their "best foot forward", there is no obligation for them to present sufficient evidence to permit a final determination. (See MacNeil, supra at paragraphs 36, 37). These decisions also make the point that the form of evidence available at motion trials may be different than at trial and the trial judge is in the best position to render a final decision (See MacNeil, supra at paragraph 38).

[22]            In Suntec Environmental Inc., supra at paragraph 19, Pelletier JA for the Court of Appeal noted that there was an ambiguity created by Rule 216(3) once a conclusion on the genuine issue was made, thus creating the possibility for the matter not to proceed to trial or the rendering of a decision if the facts permitted, based solely on affidavit evidence. Such was also the concern of Rouleau J. in Radil Bros. Fishing Co. c. Canada (ministère des Pêches et des Océans) (1998), 158 F.T.R. 313.

[23]            Having said that, I think that it is important that the jurisprudence on summary judgment be reviewed such as it is set out in Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (F.C.T.D.), and affirmed by the Federal Court of Appeal's decision in ITV Technologies Inc. v. WIC Television Ltd., 2001 FCA 11, where Justice Tremblay-Lamer J. reviewed the jurisprudence in a very practical way and categorized the general principles applicable to a motion for summary judgment at paragraph 8:

"I have considered all of the case law pertaining to summary judgment and I summarize the general principles accordingly:

1.             the purpose of the provisions is to allow the Court to summarily dispense with cases which ought not proceed to trial because there is no genuine issue to be tried (Old Fish Market Restaurants Ltd. v. 1000357 Ontario Inc. et al., [1994] F.C.J. No. 1631, 58 C.P.R. (3^rd) 221 (T.D.));

2.             there is no determinative test [...] but Stone J.A. seems to have adopted the reasons of Henry J. in Pizza Pizza Ltd. v. Gillespie [(1990), 75 O.R. (2^nd) 225 (Gen. Div.)]:

It is not whether a party cannot possibly succeed at trial, it is whether the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial;

3.             each case should be interpreted in reference to its own contextual framework [...];

4.             provincial practice rules (especially Rule 20 of the Ontario Rules of Civil Procedure, [R.R.O. 1990, Reg. 194]) can aid in interpretation [...];

5.             this Court may determine questions of fact and law on the motion for summary judgment if this can be done on the material before the Court [...];

6.             on the whole of the evidence, summary judgment cannot be granted if the necessary facts cannot be found or if it would be unjust to do so [...];

7.             in the case of a serious issue with respect to credibility, the case should go to trial because the parties should be cross-examined before the trial judge [...] The mere existence of apparent conflict in the evidence does not preclude summary judgment; the court should take a "hard look" at the merits and decide if there are issues of credibility to be resolved.

[24]            In Radil Bros. Fishing Co. Ltd. c. Sa Majesté La Reine, supra at paragraphs 14 and 15, Rouleau J. explained that in a summary judgment motion, as long as a real triable question exists in relation to essential facts, the strength or weakness of a claim or a defence does not have to be taken in consideration:

The purpose of the summary judgment provisions in the Federal Court Rules is to allow the Court to summarily dispense with those cases which it considers ought not to proceed to trial because there is no genuine factual dispute between the parties. It is a determination to be made on the particular circumstances of each case and on the law and the facts submitted in support of the claim or defence.

A motion for summary judgment is not intended, and should not be treated, as a substitute for a trial. In determining whether a trial is unnecessary and would serve no purpose, a motions judge has a restricted function and must guard against assuming the role of a trial judge and deciding the issues between the parties. Provided a genuine issue exists with respect to the material facts, it matters not how weak or strong the impugned claim or defence may be. The case should proceed to trial in order that the issue may be resolved by the trial judge. Accordingly, summary judgment should only be granted in the clearest of cases.

As mentioned by Rouleau J., when granting a summary judgment, a judge must do so as long as it appears evident to him that such a conclusion is clear from the situation presented to him in law and in fact.

[25]            Furthermore, I note the wisdom of Rouleau J. when he says that a summary judgment motion should not be a replacement for a trial, or a summary trial. The main purpose of summary judgment is that the motion should be granted in clear cases where all facts and the law are known and presented by the parties.

[26]            Taking into consideration what the jurisprudence establishes as a guide, the motions judge must have available all the necessary components to render a qualitative judgment. It would be unfair for the judge in a matter to be asked to render justice without first having a complete picture of all the relevant facts and law before him. This is what is meant by the jurisprudence when it directs a summary judgment motion judge to take a "hard look" before deciding. The motion judge in this case must take that "hard look" before deciding on a particular issue and must do so having all the factual elements and substantive legal material at his disposal. To do otherwise would not be in the interest of justice and would most probably be prejudicial to one or both sides involved.

b)         Law and jurisprudence on relevant trade marks legislation

[27]            As was decided in Kabushiki Kaisha Edwin v. SDB Design Group Inc (1986), 9 CPR (3d) 465 (FCTD), it is not essential to register in order to acquire rights in a trade-mark so as to preclude others from using the same or a confusing trade-mark. A person who uses a mark, regardless of registration, has the right to prevent the subsequent use of a confusing trade-mark by another but only in the same trading area.

c)         Law and jurisprudence on passing off

[28]            Sections 7(b) and (c) of the TMA read as follows:

"UNFAIR COMPETITION AND PROHIBITED MARKS

Prohibitions

7. No person shall

[...]

(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another,    

(c) pass off other wares or services as and for those ordered or requested;

[29]            As decided in Kirkbi AG v Ritvik Holdings Inc. (2003), 26 CPR (4th) 1 at para. 38 (FCA), the Federal Court of Appeal has stated that section 7(b) is the equivalent statutory expression of the common law tort of passing off with one exception: in order to use section 7(b) a person must prove that they have a valid and enforceable trade-mark, whether registered or unregistered. Section 7(b) does incorporate criteria specific to trade-marks otherwise governed by the Act, such as by subsection 6(2).    Furthermore, as was decided in Procter & Gamble Pharmaceuticals In.c v. Novopharm Ltd (1996), 68 CPR (3d) 461 at 466 (FCTD); Horn Abbot Ltd. v. Thurston Hayes Developments Ltd (1997), 77 CPR (3d) 10 at 17 (FCTD); and Top-Notch Construction Ltd. v. Top-Notch Oilfield Services Ltd. (2001), 13 CPR (4th) 515 at para. 36 (FCTD) in order to come under section 7(b) a plaintiff must meet all of the following three tests:

i)           a conduct test: "direct public attention to [the defendant's] wares";

ii)         a confusion test: "in such a way as to cause or be likely to cause confusion in Canada", and

iii)          a timing test: "at the time [the defendant] commenced so to direct attention to them".

[30]            Section 7(c) of the Trade-marks Act is the statutory expression of the common law tort of passing off and prohibits a person from passing off other wares or services as and for those ordered or requested.

d)         Law and jurisprudence on copyright infringement

[31]            With regards to copyright infringement under sections 3 and 27(2) as well as secondary infringement under s. 27(2)(c) of the CA:

[32]            Sections 3 of the CA reads as follows:

COPYRIGHT

Copyright in works

3. (1) For the purposes of this Act, "copyright", in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

(a) to produce, reproduce, perform or publish any translation of the work,

[...]

[33]            Sections 27(1) and (2) of the CA read as follows:

27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

Secondary infringement

(2) It is an infringement of copyright for any person to

(a) sell or rent out,

(b) distribute to such an extent as to affect prejudicially the owner of the copyright,

c) by way of trade distribute, expose or offer for sale or rental, or exhibit in public,

(d) possess for the purpose of doing anything referred to in paragraphs (a) to (c), or

(e) import into Canada for the purpose of doing anything referred to in paragraphs (a) to (c), a copy of a work, sound recording or fixation of a performer's performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it.

[34]            Therefore in accordance with the CA, it is an infringement of copyright for any person to do, without the consent of the copyright owner, anything that only the owner of the copyright has the right to do. Pursuant to sections 3 and 27(1) of the CA, where consent of the owner is given expressly or by clear implication, there is no copyright infringement. To determine whether or not there has been infringement or secondary infringement thus requires a determination of the facts in accordance with the law and, in this case, they are clearly in dispute.

[35]            Furthermore, it is also a principle of copyright law that the work must be an original production and, as set out in Inhesion Industrial Co. v. Anglo Canadian Mercantile Co. (2000), 6 CPR (4th) 362 (FCTD), the presumption that copyright subsists, as afforded by sub-section 34.1 of the CA, implies that originality is also presumed. "Originality" implies that the work is not a replica, rather, that it has been independently produced and that it is not, in essence, a mere copy of existing material. The test to determine originality is as set out in Kilvington Bros Ltd. v. Goldberg (1957), 28 C.P.R. 13 (Ont. HC); Hay and Hay Construction Co. Ltd. v. Sloan et al., [1957] 12 CPR 132 at 448; cf. Goldner v. Canadian Broadcasting Corp. (1972), 7 CPR (2d) 158 at 162 (FCTD); Grignon v. Roussel (1991), 38 CPR (3d) 4 at 7 (FCTD); and is aimed at determining whether work is original in the sense that it is substantially different from other works and that it originated from the author.

V.        SUBMISSIONS

a)         The defendants' submissions (the moving party)

[36]            It is the defendants' position that paragraph 7(b) of the TMA - prohibitions - cannot apply to the present factual situation since :

-           Albian Sands, being in the oil extraction business is not, as is the case of the plaintiffs, in the safety system business and, since section 7 comes under the heading "unfair competition", Albian Sands is not a competitor or even a potential competitor;

-           Albian Sands does not trade in safety systems and materials in such a way as to create confusion as mentioned in paragraph 7(b) of the TMA, nor as defined by the interaction of both sections 6 and 4 of the TMA, because the use was exclusively internal to its organization;

-           Albian Sands submits that there is a valid agreement which, through BHP Diamonds, gives them the right to use and modify the PASS System, but that since these are issues that have to be settled between PASS Inc. and BHP Diamonds and because of certain licensing agreements, the Federal Court would not have the jurisdiction to resolve these issues as they are not related to a cause of action under paragraph 7(b) of the TMA.

[37]            On the plaintiffs' alleged prohibition contained at paragraph 7(c) of the TMA against the defendants, the defendants submit that, for the following reasons, no genuine issue of passing off is created :

-           Although Albian Sands admits to having used the PASS and Positive Attitude Safety System trade-marks in October and November 1999, the defendants are not in the business of marketing safety systems and;

-           Albian did not advertise, offer for sale nor sell Safety Systems to anyone. Therefore, the passing off prohibition contained at paragraph 7(c) of the TMA cannot have application in this matter.

The defendants did not supply any references to support their arguments.

[38]            Furthermore, the defendants claim that no genuine issues have been raised in the Amended Statement of Claim when the plaintiffs allege the following :

-           both defendants have infringed the PASS Inc. copyright in the PASS System by producing and reproducing the PASS materials, without authorization, as well as by performing and causing employees to perform substantial portions of the PASS material procedures, by selling, renting out, by way of trade distributing, exposing or offering for sale or rental, and exhibiting in public the PASS materials or some substantial portion of it, by distributing copies of the PASS materials or substantial portion of it and by doing so, affecting PASS Inc. in a prejudicial way contrary to sections 27 and 3 of the CA;

-           both defendants, without due authorization, reproduced and/or modified the PASS System in such a way as to reproduce a substantial portion of the PASS System, which they then called ASESS, for their use and the use of others contrary to sections 27 and 3 of the CA.

[39]            The defendants take the position that the allegations regarding sections 27 and 3 of the CA do not apply to the factual situation in the present proceedings because:

-           there is no evidence that the defendants have sold, rented out or exposed and offered for sale or rental the PASS Systems or a substantial portion of it;

-           there is no evidence of "performance," as defined in section 2 of the CA by the defendants, or by their employees as outlined in sections 2 and 27 of the CA;

-           there is no evidence that the defendants have reproduced a substantial portion of the PASS Systems in the ASESS System.

b)         The plaintiffs' submissions

[40]            The plaintiffs respond to the defendants' arguments in their submissions by claiming that a prohibition under paragraph 7(b) of the TMA relates to passing off, that the evidence does in fact establish a passing off case, that there was a reproduction of PASS by photocopying it or modifying it in a summary way, that ASESS is a copy of PASS, and that such behaviour is a breach of the CA. It should be noted that the plaintiffs did not respond specifically to the section 7(c) arguments.

VI.       Analysis

a)         The trade marks "PASS" and "Positive Attitude Safety System" in association with safety systems (the trade mark analysis)

[41]            The plaintiffs claim a right to two unregistered trade-marks, namely PASS and Positive Attitude Safety System, in association with their products and services in Canada as well as worldwide. For the plaintiffs, the public recognizes these trade-marks as distinguishing PASS Inc.'s safety system and consulting services from others and it is therefore their position that, by instrumenting ASESS, which they consider to be a replica of the PASS System, the defendants have created confusion which adversely affects their PASS products and services.

[42]            The defendants acknowledge having used the PASS trade-marks and the supporting material, but claim to have only done so for a very short time period (October to November 1999). They also admit to having distributed the material to employees and contractors.

[43]            It should also be noted that through their submissions, the defendants did not propose that the unregistered marks PASS and Positive Attitude Safety System were not trade-marks in association with safety systems and services in accordance with the TMA.

[44]            Furthermore, as previously noted the defendants admit having used the PASS and Positive Attitude Safety System trade-marks during the months of October and November 1999 exclusively within their organisation when Mr. Stibbard photocopied and distributed the BHP/Ekati PASS Handbook, which was an almost identical replica of the PASS System, to Albian Sands' employees and contractors without copyright notices. This is clearly a factual admission of use of the trade-marks subject to a determination on whether or not a license was in effect which would permit such usage.

[45]            The evidence also indicates the possibility that the ASESS System was in reality the PASS System and if it is in fact the case, it can be argued that such a situation would place the defendants in contravention of paragraph 7(b) of the TMA.

[46]            Keeping all this in mind and the fact that a motion judge's primary role at first is not to resolve issues of fact, but to determine whether a genuine issue for trial exists, I conclude that there is a genuine issue arising from the prohibition contained in paragraph 7(b) of the TMA that concerns the facts of this case and the law. Secondly, having taken a hard look at the parties' submissions, the affidavits, the cross-examinations and the respective documentary evidence, I am of the opinion (my comments being directed to both sides in this matter) that I do not have the benefit of having received all of the necessary factual evidence, nor the arguments in law to properly respond to this genuine issue and therefore believe that a trial judge will be in a better position to decide.

[47]            As I have already mentioned and notwithstanding the incontestably different nature of each of the parties' "trade", when considering the general issue addressed in paragraph 7(c) of the TMA, the question of "same trade" or "being in the same business of" could nonetheless be applicable to these facts. While I make no final conclusion on this issue, I note that the defendants, by having distributed the PASS "wares" and later by having "created" their own safety system - ASESS - which was also distributed to employees and outside contractors involved in the mining industry, such an activity might be included in the concept of business marketing.

[48]            In any event I do conclude, when contemplating the possibility of a prohibition as contained in paragraph 7(c) of the TMA, that the facts as admitted are such that a genuine issue does exist and, that being said, the Court notes again that the parties have not presented submissions in fact or in law that would permit a determination on this issue. Again, I find that in the case of this genuine issue, a trial judge will be in a better position to make a determination.

[49]            Based on the aforementioned and having carefully reviewed the pertinent sections of the legislation, I am of the opinion that paragraph 7(c) of the TMA constitutes a legislative prohibition of the common law tort of "passing off" and that conversely under paragraph 7(b), the prohibition addresses the use of wares in such a way as to create confusion with the wares of the trade-mark holder. However, it is unclear whether this is what the plaintiffs are claiming when they submit, at paragraph 29 of their memorandum, that Albian Sands misrepresented that ASESS was approved by PASS Inc. to Mr. Currie as well as to companies like KMC, and that such misrepresentation caused confusion that would create damage through loss of customers and that by doing so, Albian Sands has replaced the trade-marks PASS with the name ASESS.

[50]            Because this is a motion for summary judgment, I do not have the benefit of having the plaintiffs' response to Albian Sands' arguments that it was not in competition with PASS Inc. and that it did not "trade" in safety systems or safety materials, and therefore no "confusion" could be created, especially when the use as factually admitted to was exclusively internal to the Albian Sands organisation, its employees and contractors.

[51]            I do not think that the arguments presented by Albian Sands lead to a clearly "black or white conclusion". For example, P.A. Côté in The Interpretation of Legislation in Canada at page 64 when he cites Lord Sumner in United Buildings Corporation v. City of Vancouver Corporation, [1915] A.C. 345, 351, outlines that statutory interpretation requires that the weight afforded to paragraph headings and titles varies with the circumstances:

That the titles, which a statute prefixes to parts of the Act, may be looked at as aids in the interpretation of the language of such parts is well settled, but the assistance to be derived from such consideration varies considerably.

Thus, according to the rules of statutory interpretation, the title of legislation or paragraph headings contained therein are not in and of themselves determinative elements to consider when seeking to determine legislative intent. One must look at the statutory text itself and interpret it by relying on the definitions as well as the textual meaning. A title, along with other references, can be used for interpretation purposes, but not necessarily in a determinative way.

Therefore, the argument that Albian Sands is not a competitor per se is debatable.

[52]            Again, in this same vein, the argument that Albian Sands is not in the "trade" of safety systems and materials (based on the interaction of sections 7(b), 6 and 4 of the TMA) raises the following question: why then did it produce the ASESS System? Was the ASESS System considered by other contractors as an alternative to the PASS System? The evidence is such that it demonstrates that Albian Sands did not want to pay for the license to use the PASS System and that it created ASESS in response to the legal issues arising from the Statement of Claim that was issued to them. Based on the submissions, I am of the opinion that I have insufficient evidence before me to reach a final determination on this particular aspect of the matter. However, regarding the argument that the use of the safety systems or safety materials was exclusively internal, I note that Albian Sands is a joint venture that includes three partners (Shell Canada, Western Oil Sands and Chevron) and that at least five (5) other contracting companies were involved. The evidence also shows that the mining world in Canada is a small world made up of enterprises bound to regularly interact with each other. Therefore, what is internal to one joint venture, because of the limited number of overall participants in the industry, can become external. I am therefore of the opinion that the internal use argument must be assessed in light of these facts. After some consideration, I have come to the opinion that there is a possibility of making the trademark argument. Being as the test is not whether they will win but whether their argument is deserving of being heard, I think that, from the evidence and argument I have seen, it might be too hasty to grant summary judgment to the defendants on any of the trademark issues. A Trial Judge will be in a better situation than I to make proper determination on these issues.

b)         The copyright allegations of infringement (the copyright analysis)

[53]            I first must note that, for the purposes of this decision, the defendants did not in writing, nor orally, question the validity of the registration of the PASS System as a copyright.

[54]            As will later be seen when discussing the evidence, the problems raised by the Amended Statement of Claim with reference to the copyright allegations raise important and genuine issues; however, on the question of PASS System reproduction, the documentary evidence and submissions appear to permit a limited level of determination at this stage. For example, I note that the three corporate officials, Mr. Burns, Mr. Stibbard and Mr. Currie, were each cross-examined on their affidavits and therefore the submissions appear complete and none of the parties indicated that further evidence would be submitted at trial from them. Nonetheless, there remains a possibility that not all the evidence necessary to reach a final determination on every issue raised before me and therefore most of the issues will have to be dealt with by the trial judge. However, for those issues where I am satisfied that all of the evidence is before the Court, I will draw the necessary conclusions. I adopt this approach with the sincere hope that in so doing it will ease the trial process for all concerned, if not facilitate potential settlement between the parties.

[55]            The evidence presented in these proceedings raises major issues concerning the defendants' behaviour, most notably through their dealings with safety programs and use of the PASS System or a substantial part of it not only for their own purposes, but for those of others such as contractors involved in the mining industry.

[56]            There is clear evidence demonstrating that both defendants have reproduced textually and distributed the PASS System under a modified name for a period of two months in the Fall of 1999, the whole subject to a determination on whether or not a license was in effect which would permit such usage.

[57]            There is also evidence that Mr. Stibbard, while working for BHP Diamonds, did reproduce and distribute the PASS System (under the name BHP/Ekati PASS handbook) in 1997 and 1998 to employees as well as to contractors. Furthermore, there is evidence that Mr. Stibbard, having been seconded to another BHP Diamonds project, Muskeg River, did distribute the BHP/Ekati PASS handbook to additional employees and contractors. However, the defendants submit that there is a license for such use as it appears from three license agreements between BHP Diamonds and PASS Inc. all beginning in January 1999 (exhibits L and M of Mr. Burns' April 8^th, 2004 affidavit) and that these licenses could be interpreted as having permitted such use to Albian Sands in the Fall of 1999. The plaintiffs disagree with these submissions and have informed the Court of their intention to call the Vice-President of BHP Diamonds who signed the license agreement. Also, the defendants submit that the contractual issues arising from the license agreements are not under the Federal Court's jurisdiction.

[58]            I have also tried to identify if the evidence indicates that the defendants have sold, rented out, or offered for sale or rental the PASS System. I did not find such evidence.

[59]            As mentioned before, I did however, find evidence of prejudicial reproduction and distribution, as PASS Inc. was not paid for said use, as well as exposition and exhibition in public of the PASS System during at least the Fall 1999 period, if not before, all of which may be subject to the license agreements signed in January 1999 and thereby an issue of jurisdiction before this Court. On this basis, I conclude that, pursuant to sub-section 27(1), as well as paragraphs 27(2)(b),(c) and (d) of the CA, there was copyright infringement of the PASS System, and I take care to add that as indicated by the evidence Mr. Stibbard, although he denies knowing that PASS Inc. held copyright in the PASS System, in fact did know that such was the case namely because he testified that Mr. Steele told him in 1998 to get a license from PASS Inc. I further note that as the supervisor and user of the BHP/Ekati PASS handbook, he knew that the copyright notices that had appeared in the PASS Inc. handbook had subsequently been removed from those used at his mine. (See the cross-examination of Mr. Stibbard at page 8 lines 35 to 36 and page 7 lines 31 to 32).

[60]            In coming to this conclusion, I am reminded of the words of Justice Mahoney (as he was then) in R. v. James Lorimer and Company Limited [1984] 1 F.C. 1065 (CA) when he wrote at page 1073 :

"The Act is clear. Infringement does not require that the infringing work compete in the market place with that infringed: It requires only that the infringer do something that the copyright owner alone has the right to do."

In this case the evidence clearly demonstrates, subject to a determination being made regarding the license agreements and the question of this Court's jurisdiction, that the defendants did infringe the PASS System copyright in the Fall of 1999 by reproducing and distributing in a prejudicial way as well as by exhibiting the disputed material in public. The Court also takes note that there is also another possible infringement by Mr. Stibbard that began in 1997 and onward, subject to the existence or not of a license agreement. I leave this matter for the trial judge to decide, but nonetheless conclude that the defendants did not sell, rent out, expose, nor offer for sale or rental the PASS System or a substantial part thereof.

[61]            Concerning the allegation of performance against the defendants, the plaintiffs consider that there was "performance" as referred to in sub-section 27(2) and defined in section 2 of the CA both when, under the ASESS System, Albian Sands' employees held their daily huddle, and then when questions were asked to generate the same types of responses as the PASS System, the latter of which in and of itself would constitute use of a substantial portion of what the PASS System is all about.

[62]            After careful review, I do not think that such huddles and the script provided for by the questions meet the definition of performance in section 2 of the CA :

"Means any acoustic or visual representation of a work, performer's performance, sound recording or communication signal, including a representation made by means of any mechanical instrument, radio receiving set or television receiving set."

[63]            The employees are asked to answer questions for which responses will vary depending on the events of the past day. Furthermore, the responses given can bring other questions into play which are not encompassed in the safety systems. I draw attention to the definition of "performer's performance" (paragraph 2(b) and (c) in relation to literary work) to conclude that such daily huddles do not fit into the definition of "performance" as provided for by the CA. Therefore, I conclude that there was no "performance" referred to in subsection 27(2) and defined in Section 2 of the CA.

[64]            I now turn my attention to the other concern raised by the copyright issue which is whether the ASESS System is a substantial replica of the PASS System and if so, whether its production and distribution are infringements of the PASS System copyright as protected by sections 27 and 3 of the CA?

[65]            Having reviewed the handbooks and documentation of both parties, as well as considered the parties' submissions and the law, I have no doubt that this raises a genuine issue.

[66]            As mentioned before, the evidence shows that ASESS came into existence because Albian Sands had been served with the Statement of Claim which initiated these proceedings and also because Albian Sands did not want to pay for the licensing fees required to legitimately obtain and use the PASS System. In addition, Mr. Stibbard confirmed that the PASS handbook was in front of him when ASESS was written and that it took less than a month to finalize. Finally, there is ample evidence from Mr. Currie who was involved in the Safety and Human Resources area that the ASESS System is, in substance, the PASS System. I note that Counsel for the Defendants orally informed the Court that Mr. Currie might be in a conflict of interest situation, having lost a contract with the corporate Defendant. If there is substance to such an allegation, only a Trial Judge can assess it.

[67]            Using the concept of originality in the case law, I find that the PASS System was independently created by Mr. Burns and displays the minimally required degree of skill, judgment and labour. (See Teledirect (Publications) Inc. v. American Business Information Inc. [1998] 2 F.C. 22 at paragraphs 28, 29 and 32). Mr. Burns, being a psychologist, conceptualised over a period of years, then articulated the concept into a handbook made up of charts, forms and boards. As the evidence shows, other more traditional safety systems were management driven when, for the first time, Mr. Burns introduced his safety system that was employee driven. By following such an approach and by using charts, forms and boards, this new system attracted the employees into using it and permitted a visualisation of the safety situation on a daily, weekly and monthly basis. Management had no input in the daily huddles since it was left to the employees to review questions and give responses in order to articulate it. There is also evidence that the PASS System was recognized by the Pasminco Century Mine in Australia as being the highlight of its safety process, and that the PASS huddle created an ideal climate for safe work. (See exhibit R of Mr. Burns' affidavit)

[68]            The question to be answered is whether ASESS took a substantial portion of the original expression in PASS? The analysis to be made must keep in consideration that PASS is basically an idea which was expressed in literary terms and forms. The expression of the idea is protected, but the idea is not. Now, having said that, the analysis must compare PASS with ASESS and look for the differences that could make ASESS an original in itself. The test for originality was recently articulated by the Supreme Court in 2004 SCC 13">CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, at paragraph 16.

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.

[69]            Keeping this test for originality in mind, I note that Mr. Stibbard, one of the contributors, did not show that ASESS was independently created. On the contrary, the evidence is that it was prepared using the PASS System, charts, forms and boards as an important source, along with other sources which were not detailed. ASESS was produced within a period of less than a month and reflects the PASS System's key element in that it is employee, not management, driven. In essence, it contains a list of questions which are a slightly modified expression of the same topics used under the PASS system, but which employ synonymous vocabulary or form. For example, the charts, forms and boards have been changed by the addition of columns with different titles but for which the purpose of usage is the same as those in the PASS System. In my view, both safety systems share the same general structure and substance, but each has a different form differentiated only by use of colour or format. To me, both systems have some similarities. Is that sufficient to make ASESS substantially similar to PASS?

[70]            The defendants would prefer that I review each of the ASESS System components and compare them individually, rather than as a whole, with individual components of the PASS System, in order to determine if they are substantially similar. As part of their submissions, the defendants have done this exercise which I will review and comment on:

-           The ASESS daily form and the PASS safety improvement huddle white board were not substantially similar in that only the usage of a chart for the daily huddle and the word date in the left column were similar. However, I note that the purpose of the PASS board and ASESS forms are the same in that they both are used to register safety issues on a daily basis including comments and that they both share the same objective of connecting the safety issues. The use of a board or forms on the wall is similar and permits visualisation of the safety situation. Therefore, is the ASESS form a substantial reproduction of the PASS Board?.

-           The ASESS daily quality check form and the PASS safe day chart are not substantially similar in that their overall appearance is different. However, I note that both share the same purposes of reflecting a calendar month on which is positive daily outcomes are inscribed using safety or quality terminology. Although, each title is different, I note that they reflect the same principle concern which is: positive thinking in relation to safety. Both are put on the wall to be seen by all. The item of difference is the degree of quality encapsulated in the PASS chart, but not found in the ASESS form. Therefore, is the ASESS quality form a substantial reproduction of the PASS safe day chart?

-           The ASESS daily meeting notes form and the PASS flow chart, PASS improvement board and safe day chart are not substantially similar in that their overall appearances are different. However, I note that the questions contained in the ASESS daily meeting form: Did we have a safe shift? What are we going to do until it is fixed? and What was and is being done? - are included, but formulated differently in the PASS flow chart : Did we have a safe shift yesterday? What can we do about it? And what are we going to do until it is fixed? Both series of questions have the same purpose - concern for safety and are both asked at the daily huddle which is a key element of the PASS System. Therefore, is the content of the ASESS daily meeting notes form a substantial reproduction of the PASS flow chart, improvement board and safety day chart?

-           The ASESS use tool #3 and more specifically the three charts included in pages 3, 4 and 5 and the PASS safe day chart improvement board and flow chart are not substantially similar in that their overall appearances are different.    However, I note that the daily ASESS discussion is comparable to the PASS chart in that, although formatting is done differently, the ASESS and PASS Systems share the same purpose which is to visually describe the daily huddle's content in relation to safety concerns through the use of questions. Although the questions are again written using different vocabulary, they are essentially the same and address the same substantive issues. Therefore, is the ASESS daily safety check form, the ASESS meeting action list and the ASESS daily meeting notes form a substantial reproduction of the PASS safe day chart, improvement board and safe day chart?

-           The ASESS barrel discussion chart and the PASS flow chart in combination with the PASS improvement board and safe day chart are not substantially similar in that their overall appearance are different. As previously determined, while the format and the global presentation are different, the substance is the same. Questions are written in a different way, but they share the same purpose which is to address safety and quality issues with a view of improving them through questions that stimulate employee participation and empowers them to actively bring forward issues for improvement. Therefore is the ASESS board discussion chart and the PASS flow chart, in combination with the PASS improvement board and the safe day chart, a substantial reproduction?

[71]            Having all of these ASESS and PASS comparisons in mind, I can only conclude that there is some similarity between the two systems and that the ASESS System contains a certain amount of PASS components. I note that the ASESS System refers to concerns about the environment which are not found in the PASS system.    What is clear is that the defendants, in developing the ASESS System, have intentionally created a safety system that, although cloaked in a somewhat different format and using slightly different vocabulary, when examined as a whole bears a certain resemblance both in terms of quantity and quality of the methodology, to the PASS system.

[72]          Having reviewed the evidence and having noted that this litigation in part in any event will have to be decided by a trial judge and that witnesses will be called, at least by the Plaintiffs, I think that the determination as to whether ASESS is a substantial copy of PASS should be left to the trial judge. I say this, having in mind the concerns brought up by the Court of Appeal on evidence to be presented at trial in Mine Norma MacNeil and Robert Gary, supra and Suntec Environmental Inc., supra.

[73]            At risk of repeating myself, the motions judge must be in a situation of being sure that he has all available material to come to a qualitative determination. "Taking a hard look" implies making sure that all the factual elements and substantive legal material is available. Not being able to be somewhat satisfied that such information is available, and then rendering a judgment would not be in the interest of justice and could conceivably be prejudicial to one or both parties involved.

[74]            I do think that some witnesses will be called as I was told. Furthermore, I do not think that all the substantive legal material for such an issue was presented by the parties. Finally, I remind the parties that a summary judgment should be granted when all the facts and the law are known and presented.

[75]            The parties did not address the questions of the plaintiffs' moral rights, interlocutory and permanent injunctions, nor of an order requesting the distinction of the ASESS System documents, damages, costs, etc... therefore I do not intend to address them either.

[76]            On the issue of costs, I consider that both parties are responsible for the conclusions that are arrived at. Therefore, costs will be determine by the trial judge.

VII.      CONCLUSIONS

[77]            For these reasons I find that:

-            on the issue of the alleged breaches of trade-mark, there is a genuine issue; however, since the evidence presented on motion does not permit me to come to a final decision, it will be left to the trial judge for determination;

-           the plaintiffs have a valid copyright;

-           there are genuine issues brought up by the allegations of infringement of the PASS Inc. copyright and the proceedings are such that I can make the following four determinations:

1.         there is infringement in that the defendants have prejudicially reproduced and distributed the PASS System and have exhibited said system in public during at least the period of October and November 1999. What remains to be decided by the trial judge, subject to the Court's jurisdiction being established, is whether the license agreements between PASS Inc. and BHP Diamonds permitted the defendants to lawfully use the PASS system as they did. Keeping the status of these licensing agreements in mind, the trial judge should, again subject to the Court's jurisdiction being established, also decide whether there was infringement on the part of Mr. Stibbard during the period prior to the Fall of 1999;

2.          there is no infringement of sale or renting out or offer for sale or rental by the defendants;

3.          there is no evidence of the defendants "performing" and/or causing employees to "perform" substantial portions of the PASS System; and

4.          there is not sufficient evidence for me, whether factual or legal material, to establish that the ASESS System is a substantial copy of the PASS System. The Trial Judge will be in a better situation to make that determination.

[78]            The following remains to be decided by the trial judge:

-           the issues of whether or not licensing agreements were existing, the whole subject to the jurisdiction of this Court on this matter;

-           the issues giving rise to the trade-marks allegations;

-           whether Mr. Stibbard and Albian Sands, by using the PASS System (subject to a determination on the existence of licensing agreements after) infringed on PASS Inc.'s copyright. This could have an impact on the trade mark and copyright allegations;

-           whether ASESS is a substantial copy of the PASS System;

-           whether the plaintiffs' moral rights, honour and reputation, have been prejudicially affected;

-           whether a permanent injunction should be issued against the defendants;

-           whether an order to destroy the ASESS System and related documents should be issued;

-           whether damages should be granted for both the established copyright infringement as well as the alleged trade-marks infringement and their assessment made with prejudgment and post judgment interest;

-           whether exemplary, punitive and aggravated damages should be considered;

-           whether costs should be granted with an invitation for the parties to submit their terms including the costs to be granted for this summary judgment motion.

-           any other matters that the parties submit as long as it is accepted by a judge.

                                               ORDER

THIS COURT ORDERS THAT:

-           The motion for summary judgment is granted in part, costs shall be in the cause.

                 "Simon Noël"                  

           Judge

                                     FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                  T-1052-01

STYLE OF CAUSE: Positive Attitude Safety System Inc.,and others v

Albian Sands Energy Inc.and others

PLACE OF HEARING:                                 Vancouver, British Columbia

DATE OF HEARING:                                   May 12, 2004

REASONS FOR ORDER :                           The Honourable Mr. Justice Simon Noël

DATED:                     July 23^rd, 2004

APPEARANCES:

Bruce Green, Esq.                                             FOR PLAINTIFFS

Michael Manson & Timothy Lo                                     FOR DEFENDANTS

SOLICITORS OF RECORD:

Oyen Wiggs Green & Mutala                                         FOR PLAINTIFFS

Vancouver, BC

Smart & Biggar                                                 FOR DEFENDANTS

Vancouver, BC