T-2783-94
MONTREAL, QUEBEC, THIS 14th DAY OF MARCH 1997
PRESENT: RICHARD MORNEAU, ESQ., PROTHONOTARY
BETWEEN:
NAP, INC.
Plaintiff
AND
REITMANS INC.
Defendant
ORDER
| - Parties are to try to come to an agreement as to the form, time and place for the continuation of the examination for discovery of the plaintiff's representative. If such agreement proves to be unreachable, counsel may speak to the Court on this matter. |
| - Upon the continuation of said examination, the plaintiff shall: |
| - answer all outstanding questions found under subcategory C.I, C.II, C.III and C.IV; |
| - in lieu of answering the three questions asked under category G.I, identify its heads of damages; |
| - answer all proper follow-up questions arising from the questions ordered to be answered. |
| - As success on this motion is divided, no costs are awarded. |
Richard Morneau
Prothonotary
T-2783-94
BETWEEN:
NAP, INC.
Plaintiff
AND
REITMANS INC.
Defendant
REASONS FOR ORDER
RICHARD MORNEAU, ESQ.,
PROTHONOTARY:
This is a motion pursuant to rules 459 and 461 of the Federal Court Rules directed to outstanding questions from the examination for discovery of the plaintiff in a copyright and trademarks infringement action.
Background
According to the statement of claim, the plaintiff carries on business as a garment designer and importer, and creates original fabric designs for its garments. The plaintiff further alleges to be the owner of the copyright in various published artistic works which would allegedly have been created by an Earl Addison, an employee of the plaintiff, on or about October 15, 1992.
However, the certificates of registration for the copyright in the various works were issued only in September and October of 1994. They are attached as Schedule "E" to the plaintiff's statement of claim.
The examination for discovery of the plaintiff took place before the defendant filed its defence, in accordance with rule 457(2) which allows a defendant to examine a plaintiff any time after the statement of claim is filed. As a matter of fact, the defendant has yet to produce its defence.
The Motion at Bar
In compliance with my previous order, the parties have grouped the outstanding questions into categories and subcategories.
For the purpose of deciding on these numerous questions, I do not need to reproduce them in full here. I also believe that they can be dealt with collectively. This is indeed precisely the approach followed by the Court and counsel for both parties at the hearing of the motion.
I will deal with each category or subcategory in turn.
A. Questions relating to the plaintiff in general
| I. Questions relating to the identity of the plaintiff's shareholders and directors |
| As question No. 2 has been answered, no adjudication is required. |
| Questions No. 1 and 10 will not be ordered to be answered as I am of the opinion that they are irrelevant to the scope of the action as defined so far by the pleadings. |
| II. Questions relating to corporations related to the plaintiff |
| For the reasons expressed by the plaintiff in its written submissions (plaintiff's submissions), all three questions will not be ordered to be answered as they are beyond the scope of the action as defined by the pleadings and are in the nature of a "fishing expedition". |
| III. Questions relating to sales |
| No adjudication is required with respect to all questions under this subcategory as counsel for both parties agreed at the hearing that in lieu of answering these questions, the plaintiff shall provide the defendant with a breakdown by year and by design of the sales figures found in exhibit PO-4 to the affidavit of a Louise N. Gendron. |
| IV. Questions relating to other trade-marks or designs |
| With respect to all questions under this subcategory, no adjudication is required as counsel for both parties agreed at the hearing that in lieu of answering these questions, the "plaintiff will provide representative samples of the products and/or labels and/or packaging and/or other materials in association with which the products bearing the COW designs alleged in this case were sold by plaintiff in Canada from 1992 to 1995. To the extent any such samples are not available, the plaintiff will advise of its knowledge of the form and content of such items". |
| B. Questions relating to the plaintiff's representative's preparation for examination for discovery |
| Question 78 has been withdrawn. Therefore, no ruling on my part is required. |
| As to the remaining questions under this category, I find that the defendant, during the discovery or in his argument, has not made out an issue as to the reliability of the plaintiff's representative's testimony, nor as to whether the plaintiff's representative was adequately prepared for the said discovery. I do not find that the situation calls for allowing the defendant to go beyond the presumption that the plaintiff's representative meets the requirements of rules 456(2) and 458(2). Therefore all outstanding questions under this category need not be answered. |
| C. Ownership of copyright |
| As a general argument under this category, the defendant refers the Court to the plaintiff's statement of claim and, in particular, to paragraph 5 where the plaintiff expressly alleges to be the owner of the copyright in the artistic works by virtue of the fact that they were created on or about October 15, 1992 by an Earl Addison, an employee of the plaintiff at the relevant time. Also, the defendant stresses that the period of infringement alleged in the statement of claim predates the dates of copyright registration by almost two years. |
| Considering these specific allegations contained in the plaintiff's statement of claim, I agree with the defendant that it should be allowed to undertake a train of inquiry related to these allegations. |
| I do not share the plaintiff's position that the defendant cannot go beyond the certificates of registration and ask questions on the plaintiff's ownership simply because the defendant has not yet pleaded facts which, if proven, can rebut the statutory presumption of validity of copyright ownership based upon copyright registration. |
| Contrary to what appears to have been the situation in the various cases referred to by the plaintiff (see, inter alia, Syntex Pharmaceuticals Limited v. Apotex Inc. (1984), 2 C.P.R. (3d) 533 (F.C.T.D.); Samsonite Canada Inc. v. Costco Wholesale Corp. (1993), 48 C.P.R. (3d) 5 (F.C.T.D.); and FP Bourgault Industries Air Seeder Division Limited v. Flexicoil (1994), 55 C.P.R. (3d) 352 (ASP)), in the case at bar, specific allegations of creation by a plaintiff's employee before registration are made and are to be considered relevant allegations allowing questions to be put against them. |
| Consequently, outstanding questions found under subcategory C.I, II, III and IV shall be answered when discovery resumes. In addition, I find that in subcategory C.IV, questions 36 to 43 pertain to the creation and the obtaining of various schedules referred to in the plaintiff's statement of claim and attached thereto. They therefore present a sufficient element of relevancy. |
| Subcategory C.V deals with foreign trade-marks and copyright registrations. I am of the view that during the discovery and in its written submissions submitted for the purpose of this motion, the plaintiff has provided the defendant with sufficient information regarding Canadian registrations. I agree with the plaintiff that foreign registrations are irrelevant to the action in the present case. No further answers are required. |
| D. When and by whom plaintiff's garments bearing designs were manufactured |
| I agree for the reasons expressed by the plaintiff in its written submissions that these questions are not relevant to any pleaded issue. No questions under this category need to be answered. |
E, F. G.II, G.III and H
| Counsel for both parties advised the Court at the hearing of the motion that no adjudication was required with respect to questions found under these categories or subcategories. |
G.I
| The three questions found under subcategory G.I pertain to how the plaintiff calculated the different damages claimed in paragraph 17 c) and e) of its statement of claim. |
| I agree that, as such, particulars of general damages need not be provided (see Canadian Olympic Association v. National Gym Clothing Ltd. (1985), 2 C.P.R. (3d) 145, at 150). Therefore, as framed, the questions found under this subcategory do not need to be answered. |
| However, I shall allow the defendant to require that the plaintiff identify its heads of damages at discovery resumption. |
An order will issue in accordance with the reasons for order herein.
Richard Morneau
Prothonotary
Montreal, Quebec
March 14, 1997
T-2783-94
NAP, INC.
Plaintiff
REITMANS INC.
Defendant
REASONS FOR ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.:
STYLE OF CAUSE:
T-2783-94
NAP, INC.
Plaintiff
AND
REITMANS INC.
Defendant
PLACE OF HEARING:Montreal, Quebec
DATE OF HEARING:February 12, 1997
REASONS FOR ORDER BY:Richard Morneau, Esq.,
Prothonotary
DATE OF REASONS FOR ORDER:March 14, 1997
APPEARANCES:
Mr. Michael Charles for the Plaintiff
Mr. Shamir Guindi for the Defendant
SOLICITORS OF RECORD:
Mr. Michael Charles for the Plaintiff
Bereskin & Parr
Toronto, Ontario
Mr. Shamir Guindi for the Defendant
Goodman Philips & Vineberg
Montreal, Quebec