Docket: T-1765-16
Citation:
2017 FC 463
Ottawa, Ontario, May 10, 2017
PRESENT: The
Honourable Mr. Justice Fothergill
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BETWEEN:
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GEMSTONE TRAVEL
MANAGEMENT SYSTEMS INC.
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Applicant
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and
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GRAHAM MCKENZIE
ANDREWS, APPLECROSS INNOVATIONS INC. and JIANFEI XU
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Respondents
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JUDGMENT AND REASONS
I.
Overview
[1]
Gemstone Travel Management Systems Inc
[Gemstone] applies under s 57 of the Copyright Act, RSC 1985, c C-42 and
s 20(1)(b) of the Federal Courts Act, RSC 1985, c F-7 to expunge and
modify records in the Register of Copyrights [Register].
[2]
For the reasons that follow, the application is
granted. Registration Nos. 1119696, 1119701, 1119702 and 1121572 shall be
expunged from the Register. Registration No. 1114772 shall be amended to
replace “Gemstone Travel Management Systems”
with “Gemstone Travel Management Systems Inc”.
II.
Preliminary Matter
[3]
The Respondent Graham McKenzie Andrews filed
neither a record nor a memorandum of fact and law. He did, however, file a
Notice of Appearance indicating an intention to oppose the application. On May
4, 2017, the date scheduled for the hearing of the application, Mr. Andrews
submitted a letter to the Court confirming that he had not filed a memorandum
of fact and law, and advising that he would not appear or make oral submissions
at the hearing. He then proceeded to make a number of written submissions in
the letter, and asked that the letter form a part of the Court’s record.
[4]
A party before the Court must limit its
submissions to those advanced in its memorandum of fact and law (Bridgen v
Canada (Correctional Service), 2014 FCA 237 at para 35; Sandhu v Canada
(Citizenship and Immigration), [2000] FCJ No 902 at para 4 (CA); Bedeir
v Canada (Citizenship and Immigration), 2016 FC 594 at para 16; Federal
Courts Rules, SOR/98-106, Rule 70). This ensures trial fairness and allows
each party to effectively prepare for the hearing.
[5]
Gemstone asks this Court to disregard Mr.
Andrews’ letter dated May 4, 2017. Gemstone takes the position that nothing in
the letter affects the relief sought in the application, and also notes that it
has had almost no time in which to prepare a response.
[6]
The Court has a discretion to permit a party to
make submissions notwithstanding the absence of a memorandum of fact and law if
the opposing party is not prejudiced (Leung v Canada (Citizenship and
Immigration), [1999] FCJ No 1692 (TD) at para 9. The Court may also decline
to do so (Canada (Attorney General) v Transport Beloeil St Hilaire Inc,
114 FTR 70 at note 2 (TD)).
[7]
Mr. Andrews has provided no explanation for his
last-minute filing of written submissions and his failure to comply with the Federal
Courts Rules. Gemstone is potentially prejudiced by Mr. Andrews’ irregular
and late-filed submissions, and I decline to consider them. Mr. Andrews’ letter
of May 4, 2017 does not form a part of the Court’s record in this application.
III.
Background
[8]
This application is to a large extent a
continuation of the application decided by Justice Richard Southcott in Andrews
v McHale, 2016 FC 624 [Andrews]. In the previous proceeding, Justice
Southcott dismissed Mr. Andrews’ application for declarations and remedies
relating to alleged copyright infringement and infringement of moral rights by
Thomas Hilary McHale and 1625531 Alberta Ltd, a company owned by Mr. McHale.
[9]
Justice Southcott described Mr. Andrews’ claims
as follows (Andrews at para 2):
Mr. Andrews is claiming that copyright
subsists in four software systems, identified as CIRYS Travel and Rooms
Management [CIRYS], GTMS, Gemstones Travel Management Systems, and FIFO
(Fly-In/Fly-Out) Flight Scheduling and Aviation Program Management Software
[FIFO] [collectively, the Software]. He submits that, pursuant to valid
registrations under the Act, he is both joint author and joint owner of the
Software, and that he has moral rights related to the Software.
[10]
Justice Southcott found that Mr. Andrews had
failed to establish his claim of authorship, and that he had no moral rights in
the software at issue. He therefore dismissed the application.
[11]
The Respondents in Andrews, Thomas McHale
and 1625531 Alberta Ltd, sought to have four copyright registrations made by
Mr. Andrews expunged from the Register. Justice Southcott held that, in the
absence of a cross-application, he was without jurisdiction to grant the relief
sought by the Respondents in that proceeding (Andrews at para 112):
While I appreciate the Respondents’
arguments based on the efficiency of seeking expungement in the present
proceeding, considerations of efficiency do not confer jurisdiction upon the
Court. In the absence of an applicaiton [sic] by the Respondents seeking
expungement, my conclusion is that the Court does not have the jurisdiction
under section 57(4) of the Act to grant this remedy.
[12]
Gemstone has brought the present application to
remedy the jurisdictional defect identified by Justice Southcott in Andrews.
[13]
The Respondent, Jianfei Xu, has indicated
through counsel that he has no objection to the relief sought by Gemstone. Dr.
Xu is himself a Director of Gemstone.
IV.
Issue
[14]
The sole issue to be determined in this
application is whether the records in the Register should be expunged and
modified in the manner requested.
V.
Analysis
[15]
An interested person may apply to the Registrar
of Copyrights or to this Court for an order rectifying the Register in three
circumstances. First, to add an entry wrongly omitted from the Register (Copyright
Act, s 57(4)(a)). Second, to expunge an entry wrongly made or remaining on
the Register (Copyright Act, s 57(4)(b)). And third, to correct an error
or defect in the Register (Copyright Act, s 57(4)(c)).
[16]
Applications to this Court under s 57(4) of the Copyright
Act turn on their specific facts and the evidence presented. They are
brought for a variety of purposes, including to correct the name of the
copyright holder (Kennedy v Ruminski, 2014 FC 526 at para 22 [Kennedy]),
to reflect joint ownership of a copyright (Kennedy at para 32; Suttie
v Canada (Attorney General), 2011 FC 119 [Suttie]), to address
privacy concerns (Suttie; Jacobs v Canada (Attorney General),
2009 FC 628), or to address an invalid registration (Winkler v Roy, 2002
FCT 950 at para 62). In Wing v Van Velthuizen, [2000] FCJ No 1940 (TD),
Justice Marc Nadon found that the respondent was not entitled to apply for the
copyright in the first place (at para 77). Justice Nadon observed that “[t]he fact that the Respondent obtained the copyright
registration does not in any way indicate that she was entitled to obtain it”
(at para 78, citing Circle Film Enterprises Inc v Canadian Broadcasting Corp,
[1959] S.C.R. 602 at 606), and ordered that the registration be expunged (at para
79).
[17]
Gemstone seeks to expunge registration Nos.
1119696, 1119701, 1119702 and 1121572 from the Register pursuant to s 57(4)(b)
of the Copyright Act, and to amend entry No. 1114772 pursuant to s
57(4)(c) of the Copyright Act.
[18]
Registration No. 1119696 is titled “CIRYS Travel and Rooms Management”. The registered
owners are Applecross Innovations Inc, Graham Andrews and Jianfei Xu. The
registered authors are Graham Andrews and Jianfei Xu.
[19]
Registration No. 1119701 is titled “FIFO (Fly-in/Fly-out) Flight Scheduling and Aviation Program
Management Software”. The registered owners and authors are Graham
Andrews and Jianfei Xu.
[20]
Registration No. 1119702 is titled “Gemstone Travel Management Systems”. The registered
owners and authors are Graham Andrews and Jianfei Xu.
[21]
Registration No. 1121572 is titled “GTMS”. The registered owners and authors are Graham
Andrews and Jianfei Xu.
[22]
Justice Southcott held in Andrews at
paragraph 89: “Concluding that Mr. Andrews is not an
author of the Software, and therefore not a joint author with Dr. Xu as he
claims, his application must fail, as his claims to both copyright ownership
and moral rights are based on being an author.”
[23]
The Respondent Applecross Innovations Inc
[Applecross] is a corporation wholly owned and directed by Mr. Andrews. Mr.
Andrews has been found by this Court not to be an author of the software in
issue, and it follows that Applecross cannot be either. Nor has Applecross
suggested otherwise.
[24]
As previously noted, Dr. Xu does not object to
the expungement of the records from the Register. I am therefore satisfied that
registration Nos. 1119696, 1119701, 1119702 and 1121572 should be expunged from
the Register.
[25]
Registration No. 1114772 is titled “GTMS”. The registered owner is Gemstone Travel
Management Systems. The registered author is Jianfei Xu.
[26]
The amendment sought with respect to
registration No. 1114772 is intended only to correct a clerical error. Gemstone
has submitted a historical corporate search of the Alberta Register of
Corporations for Gemstone, as well as a current search dated July 20, 2016. In
both documents, Gemstone is named as “Gemstone Travel
Management Systems Inc”. I am therefore satisfied that registration No.
1114772 should be amended to replace “Gemstone Travel
Management Systems” with “Gemstone Travel
Management Systems Inc”.
VI.
Costs
[27]
Gemstone indicated in its memorandum of fact and
law that it would not seek costs against Mr. Andrews unless he opposed the
application, including by filing a memorandum of fact and law or making
submissions at any oral hearing of the application. Mr. Andrews sought to
oppose the application by letter submitted the morning of the scheduled
hearing.
[28]
For reasons explained above, I have declined to
consider Mr. Andrews’ letter dated May 4, 2017. Gemstone therefore
maintains its position that it is not seeking costs. This is a generous
position in the circumstances. Mr. Andrews’ conduct in this application has
resulted in the needless expenditure of funds and scarce judicial resources. He
is fortunate not to be burdened with a significant costs award.
VII.
Conclusion
[29]
The application is granted. Registration Nos.
1119696, 1119701, 1119702 and 1121572 shall be expunged from the Register.
Registration No. 1114772 shall be amended to replace “Gemstone
Travel Management Systems” with “Gemstone Travel
Management Systems Inc”.
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