Date: 20130131
Docket: T-2090-10
Citation: 2013 FC 109
[UNREVISED ENGLISH CERTIFIED TRANSLATION]
Ottawa, Ontario, January
31, 2013
PRESENT: The Honourable Mr.
Justice Boivin
BETWEEN:
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DORIS TREMBLAY
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Plaintiff/
Defendant to Counterclaim
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and
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ORIO CANADA INC.
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Defendant/
Plaintiff by Counterclaim
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REASONS FOR JUDGMENT AND JUDGMENT
Introduction
[1]
This
is a motion for summary trial brought under sections 213 to 219 of the Federal
Courts Rules, SOR/98-106 (the Rules). The plaintiff and defendant to
counterclaim alleges that he owns the copyright in a computer program called
“SAM” and submits that the defendant and plaintiff by counterclaim infringed
his copyright by allowing it to be copied and modified and by installing it,
selling it and distributing it to its clients, contrary to the Copyright Act,
RSC 1985, c C-42 (the Act).
[2]
The
plaintiff and defendant to counterclaim is seeking a declaration that (i) he owns
the copyright in the developments and improvements made to the SAM software
between April 2006 and June 2009 (the “modified SAM” program); (ii) the
defendant infringed his copyright by allowing and authorizing a third party to
copy the source code of the modified SAM program, which was then further
modified by the third party (the “reworked modified SAM” program); and (iii) the
defendant infringed his copyright by possessing and selling the modified SAM
program and installing it on its clients’ computers since August 2009. By this
motion, the plaintiff and defendant to counterclaim is also seeking an order
from this Court ordering the defendant and plaintiff by counterclaim to delete
and destroy its copies of the reworked modified SAM program and enjoining it
from selling and installing it.
[3]
The
defendant and plaintiff by counterclaim, on the other hand, submits that it owns
the copyright in the modified SAM program. As plaintiff by counterclaim, it is
seeking a summary judgment in its favour and an order dismissing the
plaintiff’s motion, declaring that it owns the copyright in the modified SAM
program and its modules and ordering the plaintiff and defendant to
counterclaim to hand over to it the modified SAM program and its complementary
modules within five (5) days of the date of service of the judgment. In
the alternative, the defendant and plaintiff by counterclaim is seeking an
order declaring that it holds a licence to use the modified SAM program and its
modules, authorizing it to sell them and reproduce them freely for an unlimited
time.
Factual background
[4]
Generally,
the facts in this case are admitted by the parties. Doris Tremblay is the
plaintiff and defendant to counterclaim in this motion (the plaintiff). He is
an information technology consultant operating under the name of Service Informatique
Professionnel, an unincorporated information technology consulting business. Orio
Canada Inc. (Orio) is the defendant and plaintiff by counterclaim (the
defendant) in this case. The defendant is a corporation whose primary activity
is selling an appointment management software tool for the auto mechanics
industry called SAM (Service Appointment Monitor). François Gagné is the president
of the defendant company (Affidavit of François Gagné, Response to Notice of
Motion, Tab 2). In April 2006, the defendant reached a verbal agreement
with the plaintiff to have him do some work on the SAM program (Summary Trial
Motion Record, Exhibit MAD-2 of the Affidavit of Marie-Anick Décarie, Examination
of François Gagné, p 153).
[5]
An
initial preliminary version of the SAM program was developed in 2002-2003 by
the brother of François Gagné, president of the defendant company. However, François
Gagné considers himself to be the designer and creator of the SAM program,
having designed the original characteristics essential to the development of
the software (Affidavit of François Gagné, para 3). A second version of the SAM
software was developed by third party company Openpole in 2005-2006, at the
defendant’s request (Summary Trial Motion Record, Exhibit MAD-2 of the
Affidavit of Marie-Anick Décarie, Examination of François Gagné, p 151).
[6]
In
April 2006, the defendant wanted to continue developing the SAM program with
another programmer, which led to the business relationship between the
plaintiff and the defendant following an oral agreement for these services. For
this purpose, the third party company Openpole provided the source code for the
SAM program to the plaintiff’s employee Julie Gaudreault (Summary Trial Motion Record,
Exhibit MAD-2 of the Affidavit of Marie-Anick Décarie, Examination of François
Gagné, p 154).
[7]
The
plaintiff and his employees, Julie Gaudreault in particular, provided
information technology services to the defendant by working on the SAM program
from April 2006 to June 2009 (Summary Trial Motion Record, Exhibit MAD-2 of
the Affidavit of Marie-Anick Décarie, Examination of François Gagné, pp 154-55).
The new version of the source code as programmed by the plaintiff and his
employees, the “modified SAM” program, is almost twice the size of the original
version of SAM, going from 412 files, 224 folders and 1,273 pages to 669 files,
286 folders and 2,453 pages (Summary Trial Motion Record, Affidavit of Doris
Tremblay, p 21). The plaintiff also added complementary modules, at
François Gagné’s request ([translation]
“Display”, “Email”, “Fuel”, “Estimator”, “Roadmap”, “Shop Equipment” and “Estimate
Tool”) (Response to Notice of Motion for Summary Trial, Affidavit of Julie
Gaudreault, Tab 12).
[8]
The
plaintiff billed the defendant at an hourly rate for the programming work performed
on the SAM program. The plaintiff received more than $73,000 for the work
performed from April 2006 to June 2009 (Amended Defence and Counterclaim, para 22).
[9]
The
plaintiff’s and defendant’s business relationship ended in June 2009. At that
time, the complete source code of the modified SAM program was on the
defendant’s server in Blainville (Summary Trial Motion Record, Exhibit MAD-2
of the Affidavit of Marie-Anick Décarie, Examination of François Gagné, p 168).
In July 2009, the defendant began working with another company, Groupe Énode (Énode), to
continue developing the software. The defendant provided a copy of the source
code of the modified SAM program to Énode and gave it access to the server in
Blainville (Summary Trial Motion Record, Exhibit MAD-2 of the Affidavit of
Marie-Anick Décarie, Examination of François Gagné, pp 169 and 171). This
company allegedly carried on with the development using the modified SAM
program as a jumping-off point, thus creating the “reworked modified SAM
program”. The plaintiff states that he did not authorize the defendant to make
a copy of the source code of the modified SAM program (Summary Trial Motion
Record, Affidavit of Doris Tremblay, p 22).
[10]
The
defendant has been selling copies of the reworked modified SAM program and
installing them on its clients’ computers since August 2009. This software
includes a substantial part of the source code developed by the plaintiff and
his employees (Summary Trial Motion Record, Defendant’s Admission, p 145; Exhibit MAD-3
of the Affidavit of Marie-Anick Décarie, Examination of François Gagné on
March 26, 2012, pp 204-05). The plaintiff was served with a formal
demand by the defendant on July 21, 2009, to hand over the source code of
the modified SAM program (Amended Defence and Counterclaim, para 35). The
defendant was also served with a formal demand by the plaintiff on
December 18, 2009, and on June 10, 2010, to cease its activities in
relation with the SAM software.
[11]
An
order by Prothonotary Morneau, dated December 7, 2011, was issued in this
file allowing the plaintiff to amend his statement to include the fact that the
defendant had allowed Énode to make a copy of the modified SAM program, a fact
that came to light during the examination for discovery of the president of the
defendant company. The Court also ordered the parties to agree on a draft
protection order to ensure that certain documents be produced under seal (namely,
the defendant company’s invoices to its clients from May 2006 to November 2011)
(Tremblay v Orio Canada Inc., 2011 FC 1437, [2011] FCJ no 1793 (QL)).
Issues
[12]
This
case raises three issues:
a. Who owns the copyright
in the modified SAM program?
b. Has the copyright in the
modified SAM program been assigned?
c. Has the copyright in the
modified SAM program been infringed?
Relevant legislative provisions
[13]
The
provisions of the Act that are relevant to this dispute, as well as the
relevant Rules relating to summary judgments and trials, are reproduced in the Annex
to this judgment.
Parties’ submissions
Plaintiff’s submissions
[14]
The plaintiff
alleges that he developed a full version of the source code that was copied,
used and installed by the defendant without his authorization. The plaintiff
submits that because he owns the copyright, there has been a clear infringement
of his rights under sections 3 and 27 of the Act. The plaintiff notes that
the defendant is not denying that the copyright exists—instead it is claiming
to be the owner of the copyright. The plaintiff specifies that
paragraph 34.1(1)(b) of the Act sets out a presumption of ownership
in his favour.
[15]
The plaintiff
also notes that his employees did the development work on the original SAM
program that led to the modified SAM program and that they are therefore the
authors of the program and are presumed to be the owners of the copyright,
unless the contrary is proven. Under subsection 13(3) of the Act, the
plaintiff himself, as the employer, owns the copyright in the work performed by
his employees. The plaintiff claims that he has never assigned his copyright in
the modified SAM program because, under subsection 13(4) of the Act, no
such assignment to the defendant would have been valid unless it had been in
writing and signed by the plaintiff. The plaintiff submits that the requirement
that an assignment be in writing is a substantial legal requirement (citing JL
De Ball Canada Inc v 421254 Ontario Ltd (1999), 179 FTR 231, 5 CPR (4th)
352).
[16]
The
plaintiff argues that the president of the defendant company is not a
programmer and does not possess the skills necessary to translate any ideas he
may have into code. According to the plaintiff, only his employees, who are
programmers, can be the authors of the modified SAM program, and the
instructions of the defendant company’s president, François Gagné, were merely
requests expressing the result he was seeking (Summary Trial Motion Record, Exhibit MAD-2
of the Affidavit of Marie-Anick Décarie, p 155; Book of Authorities for
the Motion, see Normand Tamaro, Loi sur le droit d’auteur, 8th ed, Scarborough, Carswell,
2009 at pp 359-74, Tab 10 [Tamaro]; Book of Authorities for the Motion, John
McKeown, Fox on Canadian Law of Copyright and Industrial Design, 4th ed,
Toronto, Carswell, pp 17-2 to 17-7, Tab 9 [Fox]).
[17]
The plaintiff
also submits that the case law clearly establishes that the author of a
computer program is the programmer, not the person who has the original idea
(citing Hanis v Teevan (1998), 81 CPR (3d) 496, 162 DLR (4th) 414 (OCA)
at para 49 [Hanis] and Matrox Electronic Systems Ltd v Gaudreau,
[1993] RJQ 2449 (QL) (CSQ) at paras 27-30 [Matrox]).
[18]
With
respect to the issue of copyright infringement, the plaintiff alleges that his
copyright has been infringed in two ways: (i) the act of allowing and
authorizing a third party company, Énode, to copy the source code; and (ii) the
act of possessing, selling and installing the version of the SAM program
developed from the copy made by Énode.
Defendant’s arguments
[19]
According
to the defendant, this is a simple case that does not require lengthy legal
arguments. Its submissions are limited to a single page.
[20]
The
defendant claims that it is the sole owner of all the rights associated with
the SAM program, which was already operational in 2006 and installed at several
dealerships, and that the plaintiff was aware that the defendant’s sole objective
in relation to the SAM program was to sell it. The defendant states that at the
outset of its relationship with the plaintiff, the latter assigned up front all
rights in future developments of the SAM program.
[21]
According
to the defendant, the oral agreement of April 2006 between it and the plaintiff
was formalized in writing in a number of bids. The defendant alleges that, in
drafting his bids, the plaintiff knew that the defendant’s use of the SAM
program was commercial rather than personal (Response to Notice of Motion and Counterclaim,
Exhibit BS-1 of the Affidavit of Brigitte Sauvageau, Examination of Doris
Tremblay, Tab 4, p 11). The defendant submits that the written clause in the
bids constitutes an assignment of any rights the plaintiff could have claimed.
[22]
The
defendant notes that the plaintiff knew several of its clients, having
implemented corrections himself directly on their servers. The defendant claims
to be the sole owner of the copyright in the modified SAM program and its
modules.
[23]
In
the alternative, the defendant submits that the plaintiff granted it a licence
or marketing rights with respect to the SAM program and its modules. The defendant
notes that from April 2006 to June 2009, during their business
relationship, the plaintiff neither demanded any royalties nor indicated to the
defendant that any would be required in the future.
Analysis
A. Motion for summary trial
[24]
The
provisions relating to summary trials were added to the Rules in 2009. The
Court set out some of the general principles governing summary trials in Teva
Canada Ltd v Wyeth LLC, 2011 FC 1169 at paras 28-36, 99 CPR (4th) 398, rev’d
on other grounds by 2012 FCA 141, 431 NR 342 [Teva] and Wenzel
Downhole Tools Ltd v National-Oilwell Canada Ltd, 2010 FC 966 at paras 33-39,
373 FTR 306 [Wenzel Downhole]. The plaintiff bears the burden of
demonstrating that a summary trial is appropriate (Teva, above, at para
35). In deciding whether a file lends itself to a summary trial, a judge may consider,
among other things, the complexity of the matter, its urgency, the cost of
taking the case forward to a conventional trial in relation to the amount
involved (Inspiration Management Ltd v McDermid St. Lawrence Ltd (BCCA)
(1989), [1989] BCJ no 1003, 36 BCLR (2d) 202), whether the litigation is extensive,
whether the summary trial will take considerable time, whether credibility is a
crucial factor, whether the summary trial will involve a substantial risk of
wasting time and effort and whether the summary trial will result in litigating
in slices (Wenzel Downhole, above, at para 37, citing Dahl v Royal
Bank, 2005 BCSC 1263 at para 12, 46 BCLR (4th) 342).
[25]
Because
the facts underlying this case are uncontested, the credibility of the parties
is not at issue, and the documentary evidence presented by the parties, such as
the affidavits and other documents produced in the ordinary course of business,
is sufficient to allow the Court to reach a conclusion (Teva, above, at
para 32).
[26]
At
the beginning of the hearing before this Court, the parties confirmed their
desire to proceed by way of a motion for summary trial. The plaintiff submits
and the Court agrees that the facts are clear and that the dispute between the
parties is limited and restricted to the legal effects of those facts.
According to the plaintiff, the Court can render a judgment based on the facts
already before it. The plaintiff is of the view that a summary trial would
permit a judgment on the merits to be reached more quickly and less expensively,
which is important to the parties, whose resources are limited. The Court also
notes that this case is limited in time (2006 to 2009) and limited to the
software at issue (the modified SAM program). The Court is of the view that the
circumstances of this case lend themselves to a motion for summary judgment in
accordance with Rules 213 to 219.
B. The issue of who owns
the copyright in the modified SAM program
[27]
First,
the Court notes that copyright law is statutory; its rights and remedies are therefore
found in the Act (CCH Canadian Ltd. v Law Society of Upper Canada 2004 SCC
13 at para 9, [2004] 1 S.C.R. 339 [CCH]). Although it is possible to
register one’s copyright, it is not necessary to do so in Canada: the author
merely needs to be Canadian, or a citizen of any other signatory of the Berne
Convention for the Protection of Literary and Artistic Works of
September 9, 1886, and the work needs to have been first published in such
a country, if publication is relevant.
[28]
Section 3
of the Act sets out the content of copyright, including, inter alia, the
sole right to produce or reproduce the work in question. Section 5 of the
Act lists the types of works in which copyright may subsist, specifying that the
work must be an “original literary, dramatic, musical [or] artistic work”. Although
the Act does not define the term “original”, the Supreme Court of Canada
considered this issue in CCH, above. Noting that the existing case law
on the subject was contradictory, the Supreme Court of Canada held that an “original”
work originates from an author and is not copied from another work, and must be
“the product of an author’s exercise of skill and judgment. The exercise of
skill and judgment must not be so trivial that it could be characterized as a
purely mechanical exercise” (CCH, above, at para 25).
[29]
The case
law also states that copyright “protects the expression of ideas in these
works; it does not protect ideas in and of themselves” (CCH, above, at
para 8). A work must therefore be in a fixed material form to attract copyright
protection, as indicated, for example, by the definition of “computer program”.
The definition of a literary work in section 2 of the Act also expressly
includes computer programs, and a computer program is defined as “a set of
instructions or statements, expressed, fixed, embodied or stored in any manner,
that is to be used directly or indirectly in a computer in order to bring about
a specific result”. In this case, it is clear and uncontested by the parties
that copyright exists in the modified SAM program. The issue is who owns it.
[30]
Paragraph 34.1(1)(b)
of the Act sets out a presumption that, in any civil proceedings in which the
defendant puts in issue either the existence of copyright or the title of the
plaintiff to it, the author shall be presumed to be the owner of the copyright
unless the contrary is proven. Furthermore, section 13 of the Act sets out
the elements relevant to the ownership of copyright. Under
subsection 13(1), the author of a work is the first owner of the copyright.
However, under subsection 13(3), where “the author of a work was in the
employment of some other person under a contract of service or apprenticeship
and the work was made in the course of his employment by that person, the
person by whom the author was employed shall, in the absence of any agreement
to the contrary, be the first owner of the copyright”. Subsection 13(4) states
that the owner of a copyright may assign the right or grant any interest in the
right by licence, but only through a written and signed document.
[31]
The
Act does not define the term “author”. As indicated in Fox, above, at
page 17-2, “There is no copyright in an idea, but only in the form in
which the idea is ultimately expressed, whether it is a written production or a
picture. The author is the person who has clothed the idea with form.” [Emphasis
added.]
[32]
The
issue is therefore to determine who exercised his skill and judgment to express
an idea, to fix it in material form (CCH, above, at paras 8 and 25; Fox,
above, at p 17-7). In Tamaro, above, at page 364, the author indicates that [translation] “it does not suffice to act
as secretary; one must effectively participate in the creation of the work and
not merely its expression under someone else’s dictation.” The author adds the
following with respect to the particular cases of programmers receiving
instructions, at page 372:
[translation]
However, it must be understood that, strictly speaking, a concept is an
idea. Thus, the Court held in a case involving telecommunications software that
the person who supplies the ideas and a general concept to programmers in
the form of notes is not the author for copyright purposes. The authors
are instead the programmers who express the ideas and the concept in
programming language. In accordance with accepted copyright principles, the
authors are those who use their skills to fix the work in a tangible form:
Hanis v Teevan.
[Citations omitted; emphasis added.]
[33]
In
this case, as mentioned above, the existence of copyright in the SAM program is
uncontested. Moreover, there is nothing significant in the evidence indicating
that the modifications made to the SAM program by the plaintiff were trivial,
unoriginal or purely mechanical, unlike in Harmony Consulting Ltd v GA Foss
Transport Ltd, 2011 FC 340, 386 FTR 171, aff’d by 2012 FCA 226, 435 NR 200,
in which an expert had testified that the modifications made by the programmer
were exceptionally simple and therefore not protected by copyright.
[34]
As
for the modified SAM program, in light of the case law stating that the author
is the one who clothes the work with form and not the one who has the idea without
making it concrete, I must find that it is the plaintiff, through his
employees, who is the author for the purposes of this case. Mr. Gagné,
President of the defendant company, openly admitted that he was not a
programmer and that he could not have done the work himself (Summary Trial
Motion Record, Exhibit MAD-2 of the Affidavit of Marie-Anick Décarie, Examination
of François Gagné, pp 152, 153, 155, 159 and 160). No affidavit has been filed
by the defendant describing the precise nature of the instructions given to the
plaintiff. Furthermore, the defendant has not provided specific arguments on
the issue of ownership of the copyright. Both its oral and written submissions
are limited to the sole issue of the assignment of rights or the grant of a
licence. Therefore, in light of the case law and the evidence in the docket, it
is clear that the plaintiff (through the work of his employees) is the author
of the modified SAM program.
C. Has there been an
assignment of copyright?
[35]
Given
the previous finding that the plaintiff owns the copyright in the modified SAM
program because of his programming work, the issue at the heart of this dispute
is whether the copyright has been assigned in this case. The Court must
consider the clause that the plaintiff has included in his bids to the defendant
(a copy of which, dated April 12, 2007, has been filed in evidence,
Exhibit BS-2 of the Affidavit of Brigitte Sauvageau, Response to Notice of
Motion for Summary Trial, Tab 5, p 3). The clause reads as follows:
[translation]
Any development done for Orio Canada Inc.
shall become the exclusive property thereof and may not therefore be marketed
or reused by Service Informatique Professionnel or any other party.
[36]
More
specifically, the issue raised is whether this clause, included by the plaintiff
in his bids, constitutes an assignment of his copyright to the defendant under
subsection 13(4) of the Act.
[37]
Subsection
13(4) of the Act reads as follows:
Assignments
and licences
13. (4) The owner of the copyright in any
work may assign the right, either wholly or partially, and either generally
or subject to limitations relating to territory, medium or sector of the
market or other limitations relating to the scope of the assignment, and
either for the whole term of the copyright or for any other part thereof, and
may grant any interest in the right by licence, but no assignment or grant
is valid unless it is in writing signed by the owner of the right in
respect of which the assignment or grant is made, or by the owner’s duly
authorized agent.
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Cession et
licences
13. (4) Le titulaire du droit d’auteur sur
une œuvre peut céder ce droit, en totalité ou en partie, d’une façon générale
ou avec des restrictions relatives au territoire, au support matériel, au
secteur du marché ou à la portée de la cession, pour la durée complète ou
partielle de la protection; il peut également concéder, par une licence, un
intérêt quelconque dans ce droit; mais la cession ou la concession n’est
valable que si elle est rédigée par écrit et signée par le titulaire du droit
qui en fait l’objet, ou par son agent dûment autorisé.
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[Emphasis added.]
[38]
The
writing and signature requirements in this subsection have remained unchanged
since its adoption in 1921 and its coming into force in 1924 (SC 1921, c 24; SC
1923, c 10, s 5). The purpose of this subsection has been considered in Mensys
Business Solution Centre Ltd v Drummond (Municipalité régionale de comté), [2002] RJQ 765, [2002]
JQ no 169 (QL) [Mensys], in which Justice Mercure made the
following statement:
[translation]
29 The following principles can be gleaned from the case law and doctrine
regarding the substantial requirement that assignments of copyright be made in
writing:
- a complete lack of writing is fatal in that it
prevents the person claiming to be the assignee from proving the assignment. An
oral assignment is invalid;
- the writing requirement is a substantial
requirement and not merely an evidentiary or procedural rule;
- the writing need not explicitly mention the
assignment. It suffices that it be signed by the author and that the
intention to assign the copyright may be reasonably inferred from the text of
the writing;
- testimonial evidence is admissible to help the
Court interpret the writing and decide whether it constitutes an assignment of
copyright;
- the writing may be drafted and signed after the
assignment of the copyright.
. . .
38 The purpose of the signed writing requirement set out in subsection 13(4)
is to protect the first owner of copyright, but certainly not third parties by
allowing them to evade copyright infringement suits more easily.
[Citations omitted; emphasis added.]
[39]
The
signed writing requirement is a substantial legal requirement and not a mere
rule of evidence, as indicated in Motel 6, Inc v No 6 Motel Limited and John
Van Edmond Beachcroft Hawthorne, [1982] 1 FC 638 at para 26 [Motel
6]:
26 I quite accept
the proposition of counsel for the plaintiff that section [13(4)] is a
substantial legal requirement and not a rule of evidence. Therefore, the
assignment itself need not necessarily be produced if the evidence establishes
that it existed and conformed to that section. The evidence, however, falls far
short of establishing on a balance of probabilities that an assignment in
writing ever existed, much less one that was signed
by . . . or of establishing who the assignee might have
been. It has merely established the possibility of at least the three equally
consistent conclusions to which I have already referred. Evidence, which merely
raises this type of speculation without weighting the scale in favour of the
actual existence of an assignment conforming to the statute, is not sufficient
to satisfy the requirements of section [13(4)].
[40]
The plaintiff
also relies on Amusements Wiltron inc v Mainville (1991), [1991] JQ
no 2574, 40 CPR (3d) 521 [Wiltron], in which Justice Macerola of
the Superior Court of Quebec wrote the following at paragraphs 37 to 39:
[translation]
37 Wiltron cannot
claim to own the copyright in this poker game because no assignment of
copyright was made in writing.
38 The company
therefore held a precarious right in this game, analogous to a licence
conferring no interest in the copyright, and it must live with the consequences
of this.
39 Despite the friendly
relationship between Mr. Halwacks and Mr. Kraml, Wiltron should have
had a confidentiality agreement signed that included a non‑competition
clause and an assignment of copyright. . . .
[41]
In
short, subsection 13(4) of the Act, which governs the assignment of
copyright and the granting of licences, does not require any particular wording
as a condition of validity; instead it sets out a copulative condition: writing
and a signature.
[42]
During
his cross-examination on the clause in question, the plaintiff clearly admitted
that he had included that clause in various contracts [translation] “for exclusivity reasons, to protect against
competition”. He stated that his intention was that it be applied to all contracts
received from the defendant company (Orio) (Exhibit BS-1 of the Affidavit
of Brigitte Sauvageau, Examination of Doris Tremblay, Tab 4, p 14). Although
the plaintiff argued that the wording of the clause made it more akin to a
non-competition clause than a copyright assignment, the Court is not persuaded
by the plaintiff’s argument.
[43]
First,
the Court notes that the clause falls under the heading [translation] “Ownership” and indicates
that any development done for Orio (the defendant) [translation] “will become the exclusive property” of Orio
(the defendant) and may not be [translation]
“marketed or reused by Service Informatique Professionnel or any other party”. Upon
examination, the plaintiff admitted that he was granting marketing rights to
the defendant (Exhibit BS-1 of the Affidavit of Brigitte Sauvageau, Examination
of Doris Tremblay, Tab 4, p 16).
[44]
The
Court is of the view that the wording of this clause amounts to an assignment
of the copyright to the defendant. Given that copyright is a right of ownership
(section 3 of the Act), the use of the terms [translation] “ownership” and [translation] “exclusive property” can only be referring to
the copyright. Furthermore, this [translation]
“exclusive” property for the benefit of Orio, the defendant, echoes the
exclusive nature of copyright as defined in section 3 of the Act.
Similarly, the clause at issue mentions that the “property” in question may not
be marketed by the plaintiff, Service Informatique Professionnel. In short, there is a written
document in this case that demonstrates the plaintiff’s intention to assign its
rights to the defendant company. However, this written document is not signed,
as subsection 13(4) of the Act requires.
[45]
As
explained above, copyright is a creature of statute, and subsection 13(4)
requires not only that an assignment of copyright be in writing to be valid,
but also that the writing be signed.
[46]
During
the hearing before this Court, counsel for the plaintiff pointed to the absence
of the plaintiff’s signature on the bid. The defendant, on the other hand,
emphasized the fact that, upon examination, the plaintiff had admitted to
having included the clause at issue on his own initiative in all bids submitted
to the defendant, thereby granting it the right to market the software:
[translation]
Q There you are, ownership:
[translation]
“Any development done for Orio Canada Inc. shall
become the exclusive property thereof and may not therefore be marketed or
reused by Service
Informatique Professionnel
or any other party.”
Did you take the initiative of inserting that
clause?
A Yes.
Q Why?
A Because it’s an annotation that has been
used in earlier contracts, for exclusivity, to protect against competition.
Q Did it apply to all contracts you received
from Orio Canada?
A Yes, the established bids, there, yes, of course.
. . .
Q Did that mean that you were not granting
it marketing rights?
A No.
Q No. It included marketing rights, correct?
A Yes.
(Exhibit BS-1 of the Affidavit of Brigitte
Sauvageau, Tab 4, pp 14 and 16)
[47]
According
to the defendant, this admission is equivalent to a signature (Hearing
transcription notes of January 8, 2013, at pp 128-29). Even if it is true
that the plaintiff’s admission reflects his intention, it is difficult for this
Court, in light of the wording of subsection 13(4) of the Act, to conclude
that the plaintiff’s intention, as clear as it seems, may be used to get around
the Act’s copulative requirements of writing and a signature. Parliament does
not refer to the concept of intention at subsection 13(4) of the Act but
expressly requires writing and a signature to render an assignment of copyright
valid. The case law has repeatedly confirmed that this is a substantial
condition that is required for the assignment to be valid (Motel 6;
Mensys, above).
[48]
In
this case, the Court has no choice but to find that a signature is lacking. Although
the parties have confirmed before this Court that the plaintiff submitted other
bids to the defendant that include the same clause, there is nothing in the
evidence to support a finding that the bids submitted after April 2007 were
signed. Furthermore, the defendant has not filed any other evidence before this
Court that could stand in for a signature (Milliken & Co v Interface
Flooring Systems (Canada) Inc, [1998] 3 FC 103, 143 FTR 106).
[49]
Had
it not been for the absence of the plaintiff’s signature, there would have been
an assignment of the copyright under the Act, but in the circumstances, the
Court can only find that, pursuant to subsection 13(4) of the Act, the plaintiff
did not assign his copyright in the modified SAM program. Accepting the defendant’s
argument and making the opposite finding solely on the basis of the plaintiff’s
testimony would render meaningless the requirement imposed by Parliament. This
finding may appear rigid, but it complies with the formal requirements of the
Act. It was not enough for the representative of the defendant company
(François Gagné) to avoid explicitly dealing with the issue of copyright with
the plaintiff simply because, [translation]
“in [his] head, it was very clear” (Summary Trial Motion Record, Exhibit MAD‑2
of the Affidavit of Marie-Anick Décarie, Examination of François Gagné, p 162 [p
50, line 4 of the examination]).
[50]
The defendant
submitted, in the alternative, that it had paid fees to the plaintiff and that
the latter had never claimed any royalties. However, just because the defendant
paid the plaintiff for his work does not mean that the defendant owns the copyright,
and just because the plaintiff did not claim any royalties does not mean that
he does not own the copyright.
[51]
That
said, and although the evidence in the record does not support a finding that
the plaintiff assigned his copyright in accordance with the conditions set out
in subsection 13(4) of the Act, the Court is nevertheless of the view, on
the basis of the record and the evidence, that the plaintiff granted an implied
licence of use to the defendant with respect to the modified SAM program. This
conclusion is dictated by the following reasons.
[52]
First,
the Court notes that this case rests on one key, determinative factor: the plaintiff
authored the clause at issue, and it was the plaintiff, not the defendant, who
included it in the bids. Next, the evidence shows that the plaintiff included
this clause repeatedly in all of his bids to the defendant and that this was
his usual practice. The plaintiff confirmed this upon examination by explaining
that the purpose of the clause was to allow the defendant to market the
modified SAM program. The evidence also shows that the plaintiff knew that the
modified SAM program would be installed at car dealerships. The plaintiff even
travelled to some of these dealerships himself on occasion. The Court also notes
that the plaintiff was paid for his work (Céjibé Communication Inc v
Construction Cleary (1992) Inc., [1998] AQ no 3520).
[53]
Therefore,
in light of the evidence, the Court finds that the plaintiff granted the defendant
an implied licence to use the modified SAM program. It has been recognized in
the case law that an implied licence can be inferred from the parties’ conduct
and need not be made in writing (Silverson v Neon Products Ltd (1978),
39 CPR (2d) 234 (BCSC); Cselko Associates Inc v Zellers Inc (1992), 44
CPR (3d) 56 (Ont Ct Gen Div)). The Court is of the view that this is the case
here.
[54]
The
Court will therefore briefly address the copyright infringement issue raised by
the plaintiff.
D. Copyright infringement
[55]
For
there to be infringement under section 27, the Act requires that something
be done without the consent of the owner of the copyright in question.
[56]
Section 27
of the Act reads as follows:
PART III
INFRINGEMENT OF COPYRIGHT AND MORAL RIGHTS AND
EXCEPTIONS TO INFRINGEMENT
Infringement of Copyright
General
Infringement
generally
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.
|
PARTIE III
VIOLATION DU DROIT D’AUTEUR ET DES DROITS MORAUX,
ET CAS D’EXCEPTION
Violation du droit
d’auteur
Règle générale
Règle générale
27. (1) Constitue une violation du droit
d’auteur l’accomplissement, sans le consentement du titulaire de ce droit,
d’un acte qu’en vertu de la présente loi seul ce titulaire a la faculté
d’accomplir.
Violation à
une étape ultérieure
(2) Constitue
une violation du droit d’auteur l’accomplissement de tout acte ci-après en ce
qui a trait à l’exemplaire d’une œuvre, d’une fixation d’une prestation, d’un
enregistrement sonore ou d’une fixation d’un signal de communication alors
que la personne qui accomplit l’acte sait ou devrait savoir que la production
de l’exemplaire constitue une violation de ce droit, ou en constituerait une
si l’exemplaire avait été produit au Canada par la personne qui l’a produit :
a) la vente ou la location;
b) la mise en circulation de façon à
porter préjudice au titulaire du droit d’auteur;
c) la mise en circulation, la mise ou
l’offre en vente ou en location, ou l’exposition en public, dans un but
commercial;
d) la possession en vue de l’un ou
l’autre des actes visés aux alinéas a) à c);
e) l’importation au Canada en vue de
l’un ou l’autre des actes visés aux alinéas a) à c).
. . .
|
[Emphasis added.]
[57]
As
indicated above, the evidence in the record shows that the plaintiff implicitly
consented to the defendant’s use of the modified SAM program and granted it a
user licence. It follows that the plaintiff’s claim that his copyright was
infringed under section 27 of the Act for lack of consent on his part
cannot be accepted, since there was consent on his part.
JUDGMENT
THIS COURT ORDERS AND
ADJUDGES that:
1)
The plaintiff owns
the copyright in the modified SAM program;
2)
The plaintiff did not
assign his copyright in the modified SAM program to the defendant;
3)
The plaintiff granted
an implied user licence to the defendant authorizing it to use the modified SAM
program;
4)
The plaintiff’s
copyright has not been infringed by the defendant;
5)
Given the result,
each party shall bear its own costs.
“Richard Boivin”
Certified true translation
Francie Gow, BCL, LLB