Date: 20090511
Docket: T-1779-05
Citation: 2009FC488
Ottawa,
Ontario,
May 11, 2009
PRESENT:
The Honourable Mr. Justice Harrington
BETWEEN:
JULES JORDAN VIDEO, INC. AND
ASHLEY GASPER
Plaintiffs
and
ALAIN ELMALEH, JACKY
ELKESLASSY,
GERALD OUZZAN, 144942 CANADA INC. (COB
KAYTEL
VIDEO DISTRIBUTION), LEISURE TIME CANADA
INC.,
TRANSWORLD SALES AGENCY LTD., JACKY’S ONE
STOP DISTRIBUTION INC.,
SYLNET DISTRIBUTION INC., JOHN DOE, JANE
DOE AND OTHER PERSONS,
NAMES UNKNOWN, WHO DEAL IN UNAUTHORIZED
OR
COUNTERFEIT EA MERCHANDISE
Defendants
and
ALAIN ELMALEH AND 144942 CANADA INC.
(COB KAYTEL VIDEO DISTRIBUTION)
Plaintiffs by Counterclaim
and
JULES JORDAN VIDEO INC., ASHLEY GASPER,
SABIN BRUNET AND JACKY ELKESLASSY
Defendants by Counterclaim
REASONS FOR JUDGMENT AND JUDGMENT
[1]
The
question posed by the defendants, Alain Elmaleh and Kaytel Video, in this
motion for summary judgement is whether the plaintiff, Jules Jordan Video Inc.,
has standing to seek an injunction for alleged breach of copyright. The answer,
they say, is that the other plaintiff Ashley Gasper is the owner of the
copyrighted works and that, therefore, the action in the name of Jules Jordan
Video should be dismissed.
[2]
According
to the plaintiffs, Ashley Gasper and his one-man company, Jules Jordan Video, the
proper question is which of the two has standing to seek the injunction. They
submit that the answer to that question is both, but if it is only one the
answer can only be determined by the trier of fact at trial and that,
therefore, the motion is premature and should be dismissed. I agree.
[3]
The
plaintiff, Ashley Gasper, of Los Angeles, is the president,
chief executive officer, sole shareholder and employee of Jules Jordan Video,
Inc., a California corporation.
Mr. Gasper writes, directs, produces and performs in “adult content” films
created and manufactured by his company Jules Jordan Video. At issue are thirteen
(13) copyrighted works. Mr. Gasper is shown on the Canadian Copyright Register
as the owner thereof. The 13 works are also registered with the United States
Copyright Office, and again Mr. Gasper is shown as the owner thereof.
HISTORY OF THE
PROCEEDINGS
[4]
Gasper
and Jules Jordan, together with another company, John Stagliano Inc., instituted
action in this Court against Alain Elmaleh, 144942 Canada Inc. (Kaytel Video
Distribution), and others for alleged breach of copyright in the thirteen works
currently in issue, as well as in other copyrighted works. They sought a
declaration that they, jointly or severally, have the exclusive right to
enforce copyright either by way of copyright ownership or by way of exclusive
worldwide distribution agreements. They sought a permanent injunction, but did
not specifically claim damages or an accounting of the defendants’ profits as
they had taken an action for same in the United States.
[5]
By
way of an interlocutory ex parte motion, they sought and obtained an
Anton Piller order which was later set aside (2006 FC 585). While Madam Justice
Gauthier was satisfied that there was some clear evidence of infringement with
respect to at least two works, and that the plaintiffs had suffered some
damage, she was not satisfied that damages would not be an adequate remedy and
so set aside the injunctive order, with costs. However she did not order that
the costs be paid forthwith. They are estimated by Alain Elmaleh and Kaytel to
be in the $120,000 range.
[6]
The
action in the name of John Stagliano Inc. has been discontinued. Elmaleh and
Kaytel have also counterclaimed against Gasper and Jules Jordan as well as
against two of their co-defendants, Brunet and Elkeslassy.
[7]
Gasper
obtained judgment in California which is currently
under appeal. He was awarded damages on what were called his “right of
publicity claim”. This claim is not part of the Canadian action. The copyright
aspect of the Californian action was dismissed. Registration in Gasper’s name
was defective because he was an employee of Jules Jordan and copyright
ownership vests in the employer. Jules Jordan’s action was
dismissed because it was not the registered copyright owner. This is not the
situation in Canada where
copyright need not be registered.
[8]
Mr.
Gasper was examined on discovery in this case both personally and as
representative of Jules Jordan. He clearly “admitted” that he, not his
company, is the owner of the copyright.
ANALYSIS
[9]
The
parties had some difficulty focusing on the motion before the Court. Counsel
for Elmaleh and Kaytel contends that the action never had any merit as against
them, and that it is now moot as all that is sought is a permanent injunction,
and they no longer distribute the works in question. Furthermore, the action
has not been prosecuted diligently. This is not, however, a motion to dismiss
on the merits or for want of prosecution. The only issue is whether Jules Jordan has
standing.
[10]
Counsel
for Gasper and Jules Jordan says that the real motive behind the
motion is costs. As the plaintiffs are foreign, security for costs is in place.
If the action is dismissed, Elmaleh and Kaytel will be able to realize on that
security. Furthermore, Gasper and Jordan intend to seek leave to amend the
Statement of Claim to seek statutory damages, as permitted by the Copyright
Act. The real mischief is that if this motion is granted, it will then be
followed by another motion to have Gasper’s action dismissed as s. 13 of
the Copyright Act raises a presumption that the employer, and not the
employee, is the owner of copyrighted works. However, neither a motion to amend
nor a motion to strike Gasper’s action is before me.
[11]
The
test on motions for summary judgment was succinctly summarized by Mr. Justice
Linden in Premakumaran v. Canada, [2007] 2 F.C.R. 191 at paragraph 8:
The defendant brought a motion for
summary judgment, seeking to dismiss the appellants' claims under Rule 213 of
the Federal Court Rules, which permits the Court to do so where there is
"no genuine issue for trial". The test to be applied by the Motions
Judge is whether the case is so doubtful that it "does not deserve
consideration by the trier of fact at a future trial". One need not show
that the plaintiff "cannot possibly succeed", only that the case is
"clearly without foundation". (See N.F.L. Enterprises L.P. v.
1019491 Ontario Ltd. (1998), 85 C.P.R. (3d) 328, at p. 329; see also Feoso
Oil Limited or "Sarla" (The), [1995] 3 F.C. 68, para. 13; ITV Technologies Inc.
v. WIC Television Ltd.(2001), 199 F.T.R. 319 at para. 4 (F.C.A.)).
[12]
In
the Sarla, above, Mr. Justice Stone made favourable reference to the
following words of Morden A.C.J.O. in Irving Ungerman Ltd. v. Galanis (1991),
4 O.R. (3d) 545 (C.A.) at pages 550-551:
A litigant's "day in
court", in the sense of a trial, may have traditionally been regarded as
the essence of procedural justice and its deprivation the mark of procedural
injustice. There can, however, be proceedings in which, because they do not
involve any genuine issue which requires a trial, the holding of a trial is
unnecessary and, accordingly, represents a failure of procedural justice. In
such proceedings the successful party has been both unnecessarily delayed in
the obtaining of substantive justice and been obliged to incur added expense.
Rule 20 exists as a mechanism for avoiding these failures of procedural
justice.
[13]
As
stated in the oft-cited decision of Granville Shipping Co. v. Pegasus Lines
Ltd. S.A., [1996] 2 F.C. 853, the general principle as recited therein by
Madam Justice Tremblay-Lamer is not whether a party cannot possibly succeed,
but rather whether the case is so doubtful that it does not deserve
consideration by the trier of fact at a future trial. If there is a genuine issue
to be tried, the case should proceed. Although the Court may determine
questions of both fact and law without a trial, this can only be done if the
motion record material is sufficient.
[14]
These
cases also state that the respondent cannot simply rely on the pleadings. It
must put its best foot forward.
[15]
Although
the allegation is made that Gasper and Jules Jordan have not put their best
foot forward, both sides have left the Court in the dark. The fact of the
matter is that there are no pertinent writings as to the relationship between
the two of them, or at least none listed in the affidavit of documents. Gasper
did not take legal advice when he incorporated, and did not specifically set
out his relationship with Jules Jordan. Jules Jordan creates and
distributes the copyright works, which Gasper writes, directs and produces, and
in which he performs.
[16]
Mr.
Gasper’s “admission” that he owns the copyright is of little value. According
to Phipson on Evidence: “Admissions are receivable to prove matters of
law…though…these are generally of little weight, being necessarily founded on
mere opinion (section 4-11, p. 78)”. The fact that Mr. Gasper is shown on the
Canadian Register as owner merely creates a rebuttable presumption in his
favour (David Vaver, Copyright Law (Toronto: Irwin Law, 2000) at 247).
[17]
There
are any number of ways in which the relationship between Mr. Gasper and his
company could be characterized in law. There is not enough material in the
record to allow me to come to any conclusion. For instance, Jules Jordan, as
employer, may be the owner pursuant to s. 13 of the Copyright Act,
should the necessary conditions have been fulfilled.
[18]
Their
relationship may be a joint venture, principal and agent, assignor and
assignee, or licensor or licensee, be it on an exclusive or non-exclusive
basis. Section 36 of the Copyright Act contemplates that an assignor may
be named as a co-plaintiff. One might also have to consider the distinction
between legal ownership on the one hand, and beneficial ownership on the other.
See F.C. Yachts Ltd. v. Splash Holdings Ltd., 2007 FC 1257.
[19]
The
financial arrangement between the plaintiffs was not probed. How was income
treated? Did it all go to Jules Jordan, except for Gasper’s
salary? Standing to sue is not a question to be answered simply by looking at
the Copyright Register.
[20]
All
and all I am not satisfied that there is no genuine issue to be tried as to the
standing of Jules Jordan Video Inc. Furthermore, there is a sound
administration of justice aspect to bringing an action to an end before trial.
Court time is precious and should not be squandered. Nothing whatsoever would
be gained by granting summary judgment, as the action would continue. Even Jules
Jordan would still
be in the action as a defendant by counterclaim.
[21]
For
these reasons, the motion shall be dismissed with costs.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that:
1.
The
motion is dismissed, the whole with costs.
“Sean Harrington”
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