Date:
20070110
Docket:
T-2064-06
Citation:
2007 FC 17
[ENGLISH TRANSLATION]
BETWEEN:
PRADO TECHNOLOGIES INC.
and
LES
PRODUITS INNOVAPLAS INC.
Plaintiffs
and
9167-9027 QUÉBEC INC.,
(carrying on business as LES
PRODUITS DE RÉSINE ACCES,S),
GESTION BOURGAULT & THÉBERGE
INC.
and
JEAN
BOURGAULT
Defendants
REASONS FOR ORDER
PROTHONOTARY
MORNEAU
[1]
This
is a motion by defendants Jean Bourgault and Gestion Bourgault & Théberge
Inc. (Gestion B & T) for an order under paragraphs 221(1)(a), (c), (d) and (f)
of the Federal Courts Rules (the Rules) to strike out the statement of
claim filed against defendant Jean Bourgault by the plaintiffs on November 24,
2006 (the Statement).
Background
[2]
The
plaintiffs are involved in the marketing of plastic products.
[3]
More
specifically, plaintiff Prado Technologies Inc. (Prado) is the holder of patent
no. 2,409,866 for an invention called “Swimming pool stairs,” one of its main
characteristics being that the tapered structure of the stairs makes it
possible to pile up many stairs, which would be advantageous for transporting,
handling and storing them.
[4]
Through
their action, the plaintiffs are accusing defendant 9167-9027 Québec Inc., with
respect to this, and defendant Gestion B & T, concerning the period before
May 2006 (when Gestion B & T was known under another name: Les Produits de
Résine Acces,s Inc.) of having marketed counterfeit pool stairs.
[5]
Also
included in the group of defendants is Mr. Jean Bourgault as an individual.
[6]
According
to defendants Jean Bourgault and Gestion B & T, the statement does not
reveal any sufficient material facts that would allow this Court to find that defendant
Jean Bourgault is personally liable, hence this application to strike, which aims
to exclude him from the action.
[7]
The
main allegations concerning the presence of Mr. Bourgault in the action are at
paragraphs 12, 19 and 21 of the statement. These paragraphs read as follows:
[translation]
12.
(…)
Mr. Bourgault is the president and administrator of defendant Gestion B &
T, a business he co-owns, through his holding company 3969029 Canada inc.
[…]
19.
The
defendant, Jean Bourgault, deliberately, intentionally and knowingly led
the defendant, Gestion B & T (at the time when it was known under the
name of Les Produits de Résine Acces,s inc.), to make and market pool stairs
that included the aforementioned items and to use a method to maintain them
that includes the aforementioned steps after seeing the plaintiffs’ pool
stairs that incorporate the Invention and after having been informed of
the plaintiffs’ rights in the Prado patent without regard to the risk of
counterfeiting.
(Emphasis added)
[…]
21
Deliberately,
intentionally and knowingly leading the defendant, Gestion B & T, by defendant
Jean Bourgault to become involved in the aforementioned activities, which were
likely to result in infringing on the plaintiffs’ intellectual property rights,
or which showed indifference to this risk, makes defendant Bourgault
personally, jointly and solely responsible for the acts of counterfeiting
committed by Gestion B & T.
Analysis
Criteria for striking
out
[8]
As
we are reminded by the following excerpt from the decision of the Federal Court
of Appeal in Sweet et al. v. Canada (1999), 249 N.R. 17, at paragraph 6
on page 23, striking out takes place only under one or the other paragraphs of Rule
221 only if the situation in question is plain and obvious:
[6] Statements of claim are struck out as disclosing no
reasonable cause of action only in plain and obvious cases and where the Court
is satisfied that the case is beyond doubt (see Attorney General of Canada
v. Inuit Tapirisat of Canada et al., [1980] 2 S.C.R. 735 at 740; Operation
Dismantle Inc. v. The Queen, [1985] 1 S.C.R. 441 and Hunt v. Carey
Canada. Inc., [1990] 2 S.C.R. 959). The burden is as stringent when the
ground argued is that of abuse of process or that of pleadings being
scandalous, frivolous or vexatious (see Creaghan Estate v. The Queen,
[1972] F.C. 732 at 736 (F.C.T.D.), Pratte J.; Waterside Ocean Navigation
Company, Inc. v. International Navigation Ltd et al., [1977] 2 F.C. 257 at
259 (F.C.T.D.), Thurlow A.C.J.; Micromar International Inc. v. Micro Furnace
Ltd. (1988), 23 C.P.R. (3d) 214 (F.C.T.D.), Pinard J. and Connaught
Laboratories Ltd. v. Smithkline Beecham Pharma Inc. (1998), 86 C.P.R. (3d)
36 (F.C.T.D.) Gibson J.). The words of Pratte J. (as he then was), spoken in
1972, in Creaghan Estate, supra, are still very much appropriate:
“… a presiding judge should not make such an order unless it be
obvious that the plaintiff’s action is so clearly futile that it has not the
slightest chance of succeeding ...”
[9]
The
question that must now be asked is the following: Is it plain and obvious that
the statement does not disclose any reasonable cause for action on the grounds
that it would not contain sufficient material facts to engage the
responsibility of Mr. Bourgault as a defendant in a personal capacity?
[10]
For
the following reasons, I think that in the context of this motion to strike—which
requires a greater test—that the question asked above must receive a negative
answer.
[11]
Generally,
I think the statement that concerns us—which essentially constitutes paragraph
19 thereof—was written carefully enough to raise, at this point, although by a
slight margin, the allegation at paragraph 19 of the statement above the
general allegations that were denounced in some landmark decisions, such as
Mentmore Manufacturing Co., Ltd v. National Merchandise Manufacturing Co. Inc.
(1978), 40 C.P.R. (2d) 164 (hereinafter Mentmore) or Dolomite Svenska
Aktiebolag v. Dana Douglas Medical Inc. (1994), 58 C.P.R. (3d) 531 (hereinafter
Dolomite).
[12]
In
Dolomite, the Court summarized as follows at page 533 what must be
alleged by a plaintiff for an infringement action to take place in a personal
capacity regarding an administrator or director of a corporation:
In
order to properly establish a cause of action against an individual as the
directing mind of a corporation, a plaintiff cannot merely plead the facts of
the defendant’s capacity as a director or officer. The plaintiff must allege
that the defendant knowingly and willingly authorized the infringing actions
which form the basis of the cause of action. A statement of claim must
particularize the circumstances from which it is reasonable to conclude that
the purpose of the director or officer is not the direction of the
manufacturing and selling activity of the company in the ordinary course of his
relationship to it, but the deliberate, willful and knowing pursuit of a
course of conduct that is likely to constitute infringement or reflects an
indifference to the risk of infringement: Mentmore Manufacturing Co., Ltd.
v. National Merchandise Manufacturing Co. Inc. (1978), 40 C.P.R. (2d) 164 at p. 174, […]
Individuals who are officers and directors of corporations are not ipso
facto responsible for infringement committed by their corporation: Katun
Corp. v. Technofax Inc. (1988), 22 C.P.R. (3d) 269 at p. 270, 21 C.I.P.R. 270.
(Emphasis added)
[13]
The
excerpt from Mentmore to which the Court refers in Dolomite reads
as follows:
[T]here must be
circumstances from which it is reasonable to conclude that the purpose of the
director or officer was not the direction of the manufacturing and selling
activity of the company in the ordinary course of his relationship to it but
deliberate, willful and knowing pursuit of a course of conduct that was likely
to constitute infringement or reflected an indifference to the risk of it.
[14]
Here,
the second part of paragraph 19 of the statement alleges first that defendant Bourgault
saw the plaintiffs’ stairs that incorporate the invention and heard about the plaintiffs’
rights to the patent at issue. I think that these indications are allegations
of sufficient material facts to lead us to remember or understand, at least for
the moment, that the first part of paragraph 19 of the statement aims at knowing
behaviour displayed by defendant Bourgault that goes beyond managing the
business of Gestion B & T, namely an inference that Gestion B & T
deliberately served as a conduit for defendant Bourgault so that counterfeiting
could be carried out.
[15]
Whether
this claim, like the situation in Mentmore, will essentially fall at the
stage of trial on the merits is another debate altogether. However, I must
conclude at this point that it is not plain and obvious under paragraph 221(1)(a)
of the Rules that the statement does not reveal any reasonable grounds for
action against defendant Bourgault. As stated by the Supreme Court in Hunt
v. Carey Canada Inc. [1990] 2 S.C.R. 959, at page 980, concerning the striking
out of an action on motion:
[…] assuming that the facts as
stated in the statement of claim can be proved, is it “plain and obvious” that
the plaintiff’s statement of claim discloses no reasonable cause of action? As
in England, if there is a chance that the plaintiff might succeed, then the
plaintiff should not be “driven from the judgment seat”. Neither the length and
complexity of the issues, the novelty of the cause of action, nor the
potential for the defendant to present a strong defence should prevent the
plaintiff from proceeding with his or her case. Only if the action is
certain to fail because it contains a radical defect ranking with the others
listed in Rule 19(24) of the British Columbia Rules of Court should the
relevant portions of a plaintiff's statement of claim be struck out under Rule
19(24)(a).
(Emphasis added)
[16]
For
the same reasons, to which must be added what was gleaned from Mr. Bourgault’s cross-examination
on affidavit, I do not believe that it is plain and obvious that the other
paragraphs of Rule 221 apply in this case.
[17]
Thus,
the motion by defendants Jean Bourgault and Gestion B & T will be dismissed
with costs. The same defendants, as well as defendant 9167-9027 Québec Inc.,
will have to serve and file their defence within thirty (30) days of the date
of the order that accompanies these reasons.
“Richard
Morneau”
Montréal, Quebec
January 10, 2007
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-2064-06
STYLE
OF CAUSE: PRADO
TECHNOLOGIES INC. ET AL
Plaintiffs
and
9167-9027 QUÉBEC INC.
ET AL
Defendants
WRITTEN MOTION REVIEWED AT
MONTRÉAL WITHOUT APPEARANCE OF THE PARTIES
REASONS FOR
ORDER: PROTHONOTARY
MORNEAU
DATED: JANUARY 10, 2007
WRITTEN SUBMISSIONS:
|
Marc-André Huot
|
FOR THE PLAINTIFFS
|
|
François Grenier
|
FOR THE DEFENDANTS
GESTION BOURGAULT
& THÉBERGE INC. AND JEAN BOURGAULT
|
SOLICITORS OF RECORD:
|
Smart & Biggar
Montréal, Quebec
|
FOR THE PLAINTIFFS
|
|
Léger Robic
Richard
Montréal, Quebec
|
FOR THE DEFENDANTS
GESTION BOURGAULT
& THÉBERGE INC. AND JEAN BOURGAULT
|
|
|
|
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