Evans and Hong v. Upward Construction Date:, 2017 BCPC 247

Citation: Evans and Hong v. Upward Construction Date: 20170508 2017 BCPC 247 File No: 1625191 Registry: North Vancouver IN THE PROVINCIAL COURT OF BRITISH COLUMBIA BETWEEN: DAVID JOHN GLENN EVANS and LILY HONG CLAIMANTS AND: UPWARD CONSTRUCTION & RENOVATION LTD. DEFENDANT REASONS FOR JUDGMENT OF THE HONOURABLE JUDGE S.M. MERRICK Appearing on their own behalf: D. Evans and L. Hong Appearing on behalf of Upward Construction & Renovation Ltd.: Michael Upward Place of Hearing: North Vancouver , B.C. Dates of Hearing: November 28, 2016; January 16, March 10, 2017

Date of Judgment: May 8, 2017 [1] David Evans and Lily Hong claim against Upward Construction & Renovation Ltd. as a result of a proposed renovation at theirresidence. [2] In late August 2014, Mr. Evans and Ms. Hong provided a “PDF” renovation design drawing for their home to the defendantand entered into a contract on September 19, 2014 with the defendant to renovate their home. The defendant’s employee, Angela Riley,created an electronic version of the renovation design from the supplied renovation design drawing and made her own layout changes tothe design. The claimants suggested changes and Ms.

Riley made the suggested changes. [3] Ultimately, the claimants terminated the contract and requested the electronic version of the renovation design. That requestwas refused by the defendant. Instead the defendant provided a non-editable PDF copy of the renovation design. [4] As a result, the claimants had to hire another company to prepare the renovation design at the cost of $4,104.71.

This alsoresulted in the claimants having to rent alternate accommodation for an extra month at a cost of $2,975.00. [5] The claimants are therefore seeking judgment of $7,079.71 representing the cost of the new renovation design plan and onemonth rent that they otherwise would not have incurred. During the trial, the claimants abandoned their claim for legal fees and thebalance of the deposit charged by the City of West Vancouver.

Position of the Parties: [6] The claimants submit that the design renovation plan is “their intellectual property” that they allowed the defendant to use andthat all of the original design elements originated from the claimants. The claimants further submit that the defendant simply convertedtheir original work into an electronic form using computer-aided design (AUTOCAD).

They argue that the use of AUTOCAD cannottransfer ownership in their work to the defendant nor can the defendant’s AUTOCAD file be protected by copyright. [7] The defendant submits that the design renovation plan for the home, which was created by the effort of its design employee, isan original artistic work. The defendant further submits that since the plan is an original artistic work, it is protected by copyright and asa result, the defendant was within its right not to provide the claimant with the electronic (i.e. AUTOCAD) file.

The Issues: [8] This case raises the issues of implied contractual terms, copyright, and copyright protection. The Contract: [9] As noted, the parties entered into a contract on September 19, 2014. It is clear from the contract that the defendant was not theclaimants’ employee. The contract is silent on the issues of copyright, ownership, and use of documents. The general principles forfinding an implied contractual term were outlined by the Supreme Court of Canada in Canadian Pacific Hotels Ltd. v. Bank of Montreal, SCC.

The majority held that terms may be implied in a contract: (1) based on custom or usage; (2) as the legalincidents of a particular class or kind of contract; or (3) based on the presumed intention of the parties where the implied term must benecessary “to give business efficacy to a contract or otherwise meeting the “officious bystander” test as a term which the parties wouldsay if questioned that they have obviously assumed. See also N.J.B. Enterprises Ltd. v. Defence Construction,

(1951) SCC, at paras. 27 and 29. [10] In this case, there can be no issue that it was an implied term of the September 19, 2014 contract that the defendant wouldprovide the claimant with a non-editable PDF copy of the renovation design and that the claimants would be able to use that documentfor their renovation. Regarding the AUTOCAD file or any modifications to the renovation design formulated by the defendant, Mr.Upward testified that in his industry the AUTOCAD or electronic file is not provided to the client nor would third party modifications tothe design be permitted. The claimant Mr.

Evans testified that in his industry, disclosure of the electronic file is customary andmodifications are permitted. Disclosure of the AUTOCAD file in my judgment was not an essential element to the renovation contractnor was it essential to allow other provisions in the agreement to function. Regarding the intentions of the parties, the claimants assumedthey were entitled to the AUTOCAD file and the defendant assumed that the claimants were not entitled to the AUTOCAD file. It is myjudgment that a term regarding ownership and use of the AUTOCAD file was not “obviously assumed by the parties”.

I am thereforeunable to imply a term regarding ownership and use of the AUTOCAD file. Is the Renovation Design Drawing Formulated by the Defendant Deserving of Copyright Protection? [11] There is no issue that a house plan can be subject to copyright protection. See Sections 2 and 5 of the Copyright Act R.S.C.1985 c. C-42. See also Hay and Hay Construction Co. v. Sloan, [1957] O.J. No. 269. [12] In order to be subject to copyright protection, the renovation design plan must be original. “Originality” is the foundation stoneof copyright (see Robertson v.

Thomson Corp., 2006 SCC 43 , [2006] 2 SCR 363, at paragraph 35). [13] To be original does not mean that the design renovation plan must be unique in the sense the elements in it have never beenseen before (see Chancellor Management Inc. v. Oasis Homes Ltd.), [2002] A.J. No. 702, at paragraph 35). [14] No minimal degree of creativity is required for work to be original, nor does it need to display particular artistic quality. It isenough that it is a product of the author’s or designer’s skill and judgment. See Construction Denis Desjardins Inc. v. Jeanson, [2010]Q.J. No. 6445, at paragraph 17.

[15] Moreover, work resulting from the simple arrangement of components can in of itself be copyrighted notwithstanding the factthat the author of the compilation holds no copyright over the components in question (see Construction Denis Desjardins Inc. v.Jeanson, at paragraph 10). [16] Finally, intellectual property law does not protect ideas in their pure form. Copyright law protects the expression of ideas: ideasthat have been fixed in some physical or electronic form. See Overview of Intellectual Property, Christopher S. Wilson, October 2008, atparagraph 1.1.2. See also CCH Canadian Ltd. v.

Law Society of Upper Canada, 2004 SCC 13 , [2004] 1 SCR 339, at paragraph14. [17] In light of the legal framework referred to, it is my judgment that the renovation design drawings created by Ms. Riley, thedefendant’s employee, constitute original artistic work within the meaning of Sections 2 and 5 of the Copyright Act, therefore, meritingthe protection offered by the Copyright Act for the following reasons. [18] The renovation design plans do indeed constitute work that has not been copied. Ms. Riley did not rely on the measurementsprovided to her by the claimants.

She attended at the claimants’ home and measured the entire home. She determined that themeasurements she was given were inaccurate and others were missing. Ms. Riley then using her measurements did her own design thataccorded with the budget restrictions and design elements she was given by the claimants. The intellectual contribution by Ms. Riley tothe renovation design plan was not purely mechanical. It was an expression of her skill and judgment. It should be noted that this effortby Ms. Riley did not preclude her from finding inspiration in pre-existing ideas. See Construction Denis Desjardins Inc. v.

Jeanson, atparagraph 16. [19] While it is true that the claimants requested changes that ultimately led to the elimination of Ms. Riley’s original ideas and areturn to the claimants’ original measurements, it was Ms. Riley’s skill and judgment that provided the expression of the claimants’ideas. Ms. Riley spent 32.5 hours on design work and 37.75 hours on drafting work. [20] As the claimants conceded during submissions, Ms. Riley’s efforts “augmented” their ideas.

Copyright Protection: [21] Having determined that the renovation design drawing formulated by the defendant is subject to copyright protection, was thedefendant entitled to refuse to provide the claimants with the AUTOCAD file? It is almost certain that the claimants if they had theAUTOCAD file would have had another party make modifications to the defendant’s renovation design drawing. Pursuant to

Section 3of the Copyright Act, the defendant has the sole right to produce or reproduce the renovation design drawing or any substantial partthereof including the sole right to sell or otherwise transfer ownership of the AUTOCAD file. [22] Pursuant to

Section 14.1 of the Copyright Act, the defendant (subject to

Section 28.2 of the Copyright Act) has the right to theintegrity of its work. Given the discrepancy regarding measurements, it is my judgment that prejudice to the defendant’s reputationwould occur if the plans were relied on and modified. [23] While the claimants certainly had an implied licence to use the renovation design plan, any reproduction or modificationrequires the consent of the defendant. By refusing to provide the claimants with the AUTOCAD file, the defendant was clearly notconsenting to any reproduction or modification as it was entitled to do pursuant to Sections 3 and 14.1 of the Copyright Act.

Accordingly, the claim is dismissed. _______________________________ The Honourable Judge S.M. Merrick Provincial Court of British Columbia