2013 FC 109, 2013 FC 109

[2014] 3 F.C.R. 404 T-2090-10 2013 FC 109 Doris Tremblay ( Plaintiff/Defendant to Counterclaim ) v. Orio Canada Inc. ( Defendant/Plaintiff by Counterclaim ) Indexed as: Tremblay v. Orio Canada Inc. Federal Court, Boivin J.—Montréal, January 8; Ottawa, January 31, 2013. Editor’s Note: This decision has been affirmed on appeal (A-86-13, 2013 FCA 225 ). The reasons for judgment, handed down September 25, 2013, will be published in the Federal Courts Reports . Copyright — Infringement — Motion for

summary trial brought under Federal Courts Rules , rr. 213 to 219 — Plaintiff, defendant to counterclaim (plaintiff), alleging owning copyright in computer program called “SAM”; submitting that defendant, plaintiff by counterclaim (defendant), infringing copyright by allowing program to be copied, modified, installed, sold, distributed to clients, contrary to Copyright Act — Plaintiff seeking various declarations regarding alleged copyright, court order ordering, inter alia, defendant to delete, destroy copies of reworked modified SAM program — Plaintiff, information technology consultant, providing work on defendant’s SAM program under verbal agreement; creating “modified SAM program” — When plaintiff’s, defendant’s relationship ending, other third party company sought by defendant creating “reworked modified SAM program” — Plaintiff stating not authorizing defendant to make copy of “modified SAM program” source code — Defendant selling, installing on clients’ computers copies of “reworked modified SAM program” — Reworked software including substantial part of source code developed by plaintiff — Whether plaintiff owning copyright in “modified SAM program”; whether copyright in “modified SAM program” assigned; whether copyright in “modified SAM program” infringed — Based on evidence herein, plaintiff constituting author of “modified SAM program” — As to whether copyright assigned pursuant to Act, s. 13(4) , wording of clause plaintiff including in bids to defendant amounting to assignment of copyright to defendant — However, plaintiff not signing written document as required by Act, s. 13(4) — Thus, given absence of plaintiff’s signature, plaintiff not assigning copyright of “modified SAM program” — Nevertheless, on basis of evidence, parties’ conduct in present case, plaintiff granting implied licence of use to defendant with respect to modified SAM program — Thus, plaintiff’s claim that copyright infringed under Act, s. 27 for lack of consent therefrom not accepted given plaintiff’s consent — Motion granted in part.

This was a motion for

summary trial brought under rules 213 to 219 of the Federal Courts Rules . The plaintiff and defendant to counterclaim (plaintiff) alleged that he owned the copyright in a computer program called “SAM” and submitted that the defendant and plaintiff by counterclaim (defendant) infringed his copyright by allowing it to be copied and modified and by installing, selling and distributing it to its clients, contrary to the Copyright Act .

The plaintiff was seeking various declarations regarding his alleged copyright and a court order ordering the defendant to delete and destroy its copies of the reworked modified SAM program and enjoining it from selling and installing it. The defendant submitted that it owned the copyright in the modified SAM program and sought a

summary judgment in its favour and an order dismissing the plaintiff’s motion. The plaintiff is an information technology consultant operating as an unincorporated information technology consulting business whereas 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). The plaintiff and defendant had reached a verbal agreement providing that the plaintiff would work on the SAM program (program). The defendant’s president considered himself to be the designer and creator of the SAM program.

The plaintiff and his employees provided information technology services to the defendant by working on the SAM program from 2006 to 2009. They created the “modified SAM program”, which was almost twice the size of the original version of the SAM program. The plaintiff billed the defendant for the programming work performed on the SAM program. When the plaintiff’s and defendant’s relationship ended, the complete source code of the “modified SAM program” was on the defendant’s server.

The defendant began working with another company to continue developing the software program, providing it with a copy of the source code of the “modified SAM program” and giving it access to its server. That other company allegedly carried on with the development using the “modified SAM program” as a jumping-off point and created a “reworked modified SAM program”. The plaintiff stated that he did not authorize the defendant to make a copy of the source code of the “modified SAM program”.

The defendant has been selling copies of the “reworked modified SAM program” and installing them on its clients’ computers; this software included a substantial part of the source code developed by the plaintiff and his employees. The issues were whether: the plaintiff owns the copyright in the “modified SAM program”; the copyright in the “modified SAM program” was assigned; and the copyright in the “modified SAM program” was infringed. Held , the motion should be granted in part. 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 plaintiff’s title, the author shall be presumed to be the owner of the copyright unless the contrary is proven. The Act does not define the term “author”. The existence of copyright in the SAM program was uncontested in this case. Moreover, there was nothing significant in the evidence indicating that the modifications the plaintiff made to the SAM program were trivial, unoriginal or purely mechanical.

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, the plaintiff, through his employees, was the author for the purposes of this case. Therefore, it was clear that the plaintiff was the author of the “modified SAM program”. As to whether the copyright was assigned in this case pursuant to subsection 13(4) of the Act , the clause that the plaintiff included in his

bids to the defendant was considered. Subsection 13(4) provides that no assignment or grant is valid unless it is in writing signed by theowner of the right. The signed writing requirement is a substantial legal requirement and not a mere rule of evidence. In short, subsection13(4) of the Act does not require any particular wording as a condition of validity; instead, it sets out a copulative condition: writing anda signature. The wording of the plaintiff’s clause amounted to an assignment of the copyright to the defendant.

In this case, there was awritten document that demonstrated the plaintiff’s intention to assign its rights to the defendant company. However, the writtendocument was not signed as subsection 13(4) of the Act requires. The plaintiff admitted to having included the clause at issue on hisown initiative in all bids submitted to the defendant. Even if the plaintiff’s admission may have reflected his intention, it was difficult to conclude herein, in light of the wording ofsubsection 13(4) of the Act, that the plaintiff’s intention could be used to get around the Act’s copulative requirements of writing and asignature.

Parliament did not refer to the concept of intention at that subsection but expressly requires writing and a signature to renderan assignment of copyright valid. Had it not been for the absence of the plaintiff’s signature, there would have been an assignment of thecopyright under the Act, but in the circumstances, the plaintiff did not assign his copyright in the “modified SAM program”. Whileappearing rigid, this finding complied with the formal requirements of the Act.

Nevertheless, on the basis of the record and the evidence,the plaintiff granted an implied licence of use to the defendant with respect to the “modified SAM program”. This conclusion was basedon the determinative factor that the plaintiff authored the clause at issue and it was the plaintiff, not the defendant, who included it in thebids. Therefore, the plaintiff granted the defendant an implied licence to use the “modified SAM program”. An implied licence can be inferredfrom the parties’ conduct and need not be made in writing, which was the case here.

It follows that the plaintiff’s claim that his copyrightwas infringed under

section 27 of the Act for lack of consent on his

part could not be accepted since there was consent on the plaintiff’spart. STATUTES AND REGULATIONS CITED Copyright Act, 1921 (The), S.C. 1921, c. 24. Copyright Amendment Act, 1923 (The), S.C. 1923, c. 10, s. 5. Copyright Act, R.S.C., 1985, c. C-42, ss. 2 “computer program”, “literary work”, 3, 5, 13, 27, 34.1. Federal Courts Rules, SOR/98-106, rr. 213, 214, 215, 216, 217, 218, 219. TREATIES AND OTHER INSTRUMENTS CITED Convention for the Protection of Literary and Artistic Works, concluded at Berne on September 9, 1886, as revised by the Paris Act of1971, [1998] Can. T.S. No. 18.

CASES CITED applied: CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339. distinguished: Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2011 FC 340, 92 C.P.R. (4th) 6, affd 2012 FCA 226, 107 C.P.R. (4th) 1. considered: Tremblay v. Orio Canada Inc., 2011 FC 1437; Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2010 FC 966, 87 C.P.R.(4th) 412; Motel 6, Inc. v. No. 6 Motel Ltd., (FC), [1982] 1 F.C. 638, (1981), 127 D.L.R. (3d) 267 (T.D.); AmusementsWiltron inc. c. Mainville, [1991] R.J.Q. 1930, (1991), 40 C.P.R. (3d) 521 (Que. Sup.

Ct.); Mensys Business Solution Centre Ltd. c.Drummond (Municipalité régionale de comté), , [2002] R.J.Q. 765 (Que. Sup. Ct.). referred to: J.L. de Ball Canada Inc. v. 421254 Ontario Ltd., , 5 C.P.R. (4th) 352 (F.C.T.D.); Hanis v. Teevan, ,162 D.L.R. (4th) 414 (Ont. C.A.); Matrox Electronic Systems Ltd. v. Gaudreau, [1993] R.J.Q. 2449 (Que. Sup. Ct.); Teva CanadaLimited v. Wyeth LLC and Pfizer Canada Inc., 2011 FC 1169, 99 C.P.R. (4th) 398, revd 2012 FCA 141, 431 N.R. 342; InspirationManagement Ltd. v. McDermid St. Lawrence Ltd., , 36 B.C.L.R. (2d) 202 (B.C.C.A.); Dahl et al. v.

Royal Bank ofCanada et al., 2005 BCSC 1263, 46 B.C.L.R. (4th) 342; Milliken & Co. v. Interface Flooring Systems (Canada) Inc., (FC), [1998] 3 F.C. 103, 1998, 83 C.P.R. (3d) 470 (T.D.); Céjibé Communication inc. c. Construction Cleary (1992) inc., [1998] J.Q. No. 3520 (Sup. Ct.) (QL); Silverson v. Neon Products Ltd., [1978] 6 W.W.R. 512 (B.C.S.C.); Cselko Associates Inc. v. Zellers Inc.(1992), 44 C.P.R. (3d) 56 (Ont. Gen. Div.). AUTHORS CITED McKeown, John S. Fox Canadian Law of Copyright and Industrial Design, 4th ed. Toronto: Carswell, 2003. Tamaro, Normand. La

Loi sur le droit d’auteur : commentée et annotée, 8th ed. Scarborough, Ont.: Carswell, 2009. MOTION for

summary trial by the plaintiff and defendant to counterclaim seeking various declarations regarding his alleged copyrightin a computer program called “SAM” as well as an order that the defendant and plaintiff by counterclaim delete and destroy its copies of

the reworked modified SAM program and that it be enjoined from selling and installing it. Motion granted in part. APPEARANCES Pascal Lauzon for plaintiff/defendant to counterclaim. André J. Bélanger for defendant/plaintiff by counterclaim. SOLICITORS OF RECORD BCF LLP , Montréal, for plaintiff/defendant to counterclaim. André J. Bélanger , Montréal, for defendant/plaintiff by counterclaim. The following is the English version of the reasons for judgment and judgment rendered by Boivin J.: Introduction [ 1 ] This is a motion for

summary trial brought under rules 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 , R.S.C., 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 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, page 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, paragraph 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, page 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, page 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, pages 154–155).

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, page 21). The plaintiff also added complementary modules, at François Gagné’s request ([ translation ] “Display”, “E-mail”, “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, paragraph 22).

[9] The plaintiff’s and defendant’s business relationship ended in June 2009. At that time, the complete source code of the modifiedSAM program was on the defendant’s server in Blainville, Quebec (summary trial motion record, Exhibit MAD-2 of the affidavit ofMarie-Anick Décarie, examination of François Gagné, page 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 SAMprogram 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, pages 169 and 171). This company allegedly carried on with the development using themodified SAM program as a jumping-off point, thus creating the “reworked modified SAM program”.

The plaintiff states that he did notauthorize the defendant to make a copy of the source code of the modified SAM program (summary trial motion record, affidavit ofDoris Tremblay, page 22). [10] The defendant has been selling copies of the reworked modified SAM program and installing them on its clients’ computerssince August 2009. This software includes a substantial part of the source code developed by the plaintiff and his employees (summarytrial motion record, defendant’s admission, page145; Exhibit MAD-3 of the affidavit of Marie-Anick Décarie, examination of FrançoisGagné on March 26, 2012, pages 204–205).

The plaintiff was served with a formal demand by the defendant on July 21, 2009, to handover the source code of the modified SAM program (amended defence and counterclaim, paragraph 35).

The defendant was also servedwith a formal demand by the plaintiff on December 18, 2009, and on June 10, 2010, to cease its activities in relation with the SAMsoftware. [11] An order by Prothonotary Morneau, dated December 7, 2011, was issued in this file allowing the plaintiff to amend his statementto include the fact that the defendant had allowed Énode to make a copy of the modified SAM program, a fact that came to light duringthe examination for discovery of the president of the defendant company.

The Court also ordered the parties to agree on a draftprotection order to ensure that certain documents be produced under seal (namely, the defendant company’s invoices to its clients fromMay 2006 to November 2011) (Tremblay v. Orio Canada Inc., 2011 FC 1437). 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 defendantwithout his authorization. The plaintiff submits that because he owns the copyright, there has been a clear infringement of his rightsunder sections 3 and 27 of the Act. The plaintiff notes that the defendant is not denying that the copyright exists—instead it is claimingto 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 hisfavour. [15] The plaintiff also notes that his employees did the development work on the original SAM program that led to the modifiedSAM program and that they are therefore the authors of the program and are presumed to be the owners of the copyright, unless thecontrary is proven. Under subsection 13(3) of the Act, the plaintiff himself, as the employer, owns the copyright in the work performedby his employees.

The plaintiff claims that he has never assigned his copyright in the modified SAM program because, undersubsection 13(4) of the Act, no such assignment to the defendant would have been valid unless it had been in writing and signed by theplaintiff.

The plaintiff submits that the requirement that an assignment be in writing is a substantial legal requirement (citing J.L. de BallCanada Inc. v. 421254 Ontario Ltd., , 5 C.P.R. (4th) 352 (F.C.T.D.)). [16] The plaintiff argues that the president of the defendant company is not a programmer and does not possess the skills necessary totranslate any ideas he may have into code.

According to the plaintiff, only his employees, who are programmers, can be the authors ofthe modified SAM program, and the instructions of the defendant company’s president, François Gagné, were merely requestsexpressing the result he was seeking (summary trial motion record, Exhibit MAD-2 of the affidavit of Marie-Anick Décarie, page 155;book of authorities for the motion, see Normand Tamaro, La

Loi sur le droit d’auteur : commentée et annotée, 8th ed, Scarborough, Ont.:Carswell, 2009, at pages 359–374, Tab 10 (Tamaro); book of authorities for the motion, John S. McKeown, Fox Canadian Law ofCopyright and Industrial Design, 4th ed, Toronto: Carswell, 2003, at pages 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 theperson who has the original idea (citing Hanis v. Teevan, , 162 D.L.R. (4th) 414 (Ont. C.A.) (Hanis), at paragraph 49and Matrox Electronic Systems Ltd. v.

Gaudreau, [1993] R.J.Q. 2449 (Que. Sup. Ct.) (Matrox), at paragraphs 27–30). [18] With respect to the issue of copyright infringement, the plaintiff alleges that his copyright has been infringed in two ways: (

i) theact of allowing and authorizing a third party company, Énode, to copy the source code; and (ii) the act of possessing, selling andinstalling 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 asingle page. [20] The defendant claims that it is the sole owner of all the rights associated with the SAM program, which was already operationalin 2006 and installed at several dealerships, and that the plaintiff was aware that the defendant’s sole objective in relation to the SAMprogram was to sell it.

The defendant states that at the outset of its relationship with the plaintiff, the latter assigned up front all rights infuture 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 numberof bids. The defendant alleges that, in drafting his bids, the plaintiff knew that the defendant’s use of the SAM program was commercialrather than personal (response to notice of motion and counterclaim, Exhibit BS-1 of the affidavit of Brigitte Sauvageau, examination ofDoris Tremblay, Tab 4, page 11).

The defendant submits that the written clause in the bids constitutes an assignment of any rights theplaintiff could have claimed. [22] The defendant notes that the plaintiff knew several of its clients, having implemented corrections himself directly on theirservers. 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 SAMprogram and its modules.

The defendant notes that from April 2006 to June 2009, during their business relationship, the plaintiff neitherdemanded 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 principlesgoverning

summary trials in Teva Canada Limited v. Wyeth LLC and Pfizer Canada Inc., 2011 FC 1169, 99 C.P.R. (4th) 398 (Teva), atparagraphs 28–36, revd on other grounds by 2012 FCA 141, 431 N.R. 342 and Wenzel Downhole Tools Ltd. v. National-Oilwell CanadaLtd., 2010 FC 966, 87 C.P.R (4th) 412 (Wenzel Downhole), at paragraphs 33–39. The plaintiff bears the burden of demonstrating that asummary trial is appropriate (Teva, above, at paragraph 35). In deciding whether a file lends itself to a

summary trial, a judge mayconsider, among other things, the complexity of the matter, its urgency, the cost of taking the case forward to a conventional trial inrelation to the amount involved (Inspiration Management Ltd. v. McDermid St. Lawrence Ltd., , 36 B.C.L.R. (2d) 202(B.C.C.A.)), whether the litigation is extensive, whether the

summary trial will take considerable time, whether credibility is a crucialfactor, whether the

summary trial will involve a substantial risk of wasting time and effort and whether the

summary trial will result inlitigating in slices (Wenzel Downhole, above, at paragraph 37, citing Dahl et al. v. Royal Bank et al., 2005 BCSC 1263, 46 B.C.L.R. (4th)342, at paragraph 12). [25] Because the facts underlying this case are uncontested, the credibility of the parties is not at issue, and the documentary evidencepresented by the parties, such as the affidavits and other documents produced in the ordinary course of business, is sufficient to allow theCourt to reach a conclusion (Teva, above, at paragraph 32). [26] At the beginning of the hearing before this Court, the parties confirmed their desire to proceed by way of a motion for

summarytrial. The plaintiff submits and the Court agrees that the facts are clear and that the dispute between the parties is limited and restricted tothe legal effects of those facts. According to the plaintiff, the Court can render a judgment based on the facts already before it. Theplaintiff 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) andlimited to the software at issue (the modified SAM program). The Court is of the view that the circumstances of this case lendthemselves 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, [2004] 1 S.C.R. 339 (CCH), at paragraph 9).

Although it is possible to register one’scopyright, it is not necessary to do so in Canada: the author merely needs to be Canadian, or a citizen of any other signatory of theConvention for the Protection of Literary and Artistic Works, concluded at Berne on September 9, 1886 [as revised by the Paris Act of1971, [1998] Can. T.S. No. 18], 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 inquestion.

Section 5 of the Act lists the types of works in which copyright may subsist, specifying that the work must be an “originalliterary, dramatic, musical [or] artistic work”. Although the Act does not define the term “original”, the Supreme Court of Canadaconsidered this issue in CCH, above. Noting that the existing case law on the subject was contradictory, the Supreme Court of Canadaheld that an “original” work originates from an author and is not copied from another work, and must be “the product of an author’sexercise of skill and judgment.

The exercise of skill and judgment required to produce the work must not be so trivial that it could becharacterized as a purely mechanical exercise” (CCH, above, at paragraph 25). [29] The case law also states that copyright “protects the expression of ideas in these works; it does not protect ideas in and ofthemselves” (CCH, above, at paragraph 8). A work must therefore be in a fixed material form to attract copyright protection, asindicated, for example, by the definition of “computer program” [in

section 2]. The definition of a “literary work” in

section 2 of the Actalso 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 thiscase, 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 eitherthe 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. Undersubsection 13(1), the author of a work is the first owner of the copyright. However, under subsection 13(3), where “the author of a workwas in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of hisemployment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be thefirst owner of the copyright”.

Subsection 13(4) states that the owner of a copyright may assign the right or grant any interest in the rightby 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 17-2.1, “There is no copyright in an idea, but onlyin the form in which the idea is ultimately expressed, whether it is a written production or a picture.

The author is the person who hasclothed the idea with form” [footnotes omitted] (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 paragraphs 8 and 25; Fox, above, at page 17-7). In Tamaro, above, at page 364, the author indicates that [translation] “it doesnot suffice to act as secretary; one must effectively participate in the creation of the work and not merely its expression under someoneelse’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 involvingtelecommunications software that the person who supplies the ideas and a general concept to programmers in the form of notes is not theauthor for copyright purposes. The authors are instead the programmers who express the ideas and the concept in programminglanguage.

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 nothingsignificant in the evidence indicating that the modifications made to the SAM program by the plaintiff were trivial, unoriginal or purelymechanical, unlike in Harmony Consulting Ltd. v. G.A.

Foss Transport Ltd., 2011 FC 340, 92 C.P.R. (4th) 6, affd 2012 FCA 226, 107C.P.R. (4th) 1, in which an expert had testified that the modifications made by the programmer were exceptionally simple and thereforenot 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 andnot 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 forthe purposes of this case. Mr.

Gagné, president of the defendant company, openly admitted that he was not a programmer and that hecould not have done the work himself (summary trial motion record, Exhibit MAD-2 of the affidavit of Marie-Anick Décarie,examination of François Gagné, pages 152, 153, 155, 159 and 160). No affidavit has been filed by the defendant describing the precisenature of the instructions given to the plaintiff. Furthermore, the defendant has not provided specific arguments on the issue ofownership of the copyright.

Both its oral and written submissions are limited to the sole issue of the assignment of rights or the grant of alicence. Therefore, in light of the case law and the evidence in the docket, it is clear that the plaintiff (through the work of hisemployees) 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 programmingwork, the issue at the heart of this dispute is whether the copyright has been assigned in this case.

The Court must consider the clausethat 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, page 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 marketedor 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 hiscopyright to the defendant under subsection 13(4) of the Act. [37] Subsection 13(4) of the Act reads as follows: 13. … Assignmentsand licences(4) The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subjectto limitations relating to territory, medium or sector of the market or other limitations relating to the scope of theassignment, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in theright by licence, but no assignment or grant is valid unless it is in writing signed by the owner of the right in respect ofwhich the assignment or grant is made, or by the owner’s duly authorized agent. [Emphasis added.] [38] The writing and signature requirements in this subsection have remained unchanged since its adoption in 1921 ([The CopyrightAct, 1921] S.C. 1921, c. 24) and its coming into force in 1924 ([The Copyright Amendment Act, 1923] S.C. 1923, c. 10,

section 5). Thepurpose of this subsection has been considered in Mensys Business Solution Centre Ltd. c. Drummond (Municipalité régionale de comté), (QC CS), , [2002] R.J.Q. 765 (Que. Sup. Ct.) (Mensys), in which Justice Mercure made thefollowing statement (at paragraphs 29 and 38): [translation] The following principles can be gleaned from the case law and doctrine regarding the substantial requirement thatassignments 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 oralassignment 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 thecopyright 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. … The purpose of the signed writing requirement set out in subsection 13(4) is to protect the first owner of copyright, but certainly not thirdparties by allowing them to evade copyright infringement suits more easily. [Footnotes 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 Ltd., (FC), [1982] 1 F.C. 638 (T.D.) (Motel 6), at pages 647–648: 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 lessone that was signed by . . . or of establishing who the assignee might have been. It has merely established the possibility of at least thethree equally consistent conclusions to which I have already referred.

Evidence, which merely raises this type of speculation withoutweighting the scale in favour of the actual existence of an assignment conforming to the statute, is not sufficient to satisfy therequirements of

section [13(4)]. [40] The plaintiff also relies on Amusements Wiltron inc. c. Mainville, [1991] R.J.Q. 1930 (Wiltron), in which Justice Macerola of theSuperior Court of Quebec wrote the following, at paragraphs 37–39: [translation] Wiltron cannot claim to own the copyright in this poker game because no assignment of copyright was made in writing. The company therefore held a precarious right in this game, analogous to a licence conferring no interest in the copyright, and it mustlive with the consequences of this. Despite the friendly relationship between Mr. Halwacks and Mr.

Kraml, Wiltron should have had a confidentiality agreement signed thatincluded 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 requireany 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 variouscontracts [translation] “for exclusivity reasons, to protect against competition”.

He stated that his intention was that it be applied to allcontracts received from the defendant company (Orio) (Exhibit BS-1 of the affidavit of Brigitte Sauvageau, examination of DorisTremblay, Tab 4, page 14).

Although the plaintiff argued that the wording of the clause made it more akin to a non-competition clausethan 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 donefor 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 wasgranting marketing rights to the defendant (Exhibit BS-1 of the affidavit of Brigitte Sauvageau, examination of Doris Tremblay, Tab 4,page 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 thatcopyright is a right of ownership (section 3 of the Act), the use of the terms [translation] “ownership” and [translation] “exclusiveproperty” can only be referring to the copyright.

Furthermore, this [translation] “exclusive” property for the benefit of Orio, thedefendant, echoes the exclusive nature of copyright as defined in

section 3 of the Act. Similarly, the clause at issue mentions that the[translation] “property” in question may not be marketed by the plaintiff, Service Informatique Professionnel. In short, there is a writtendocument in this case that demonstrates the plaintiff’s intention to assign its rights to the defendant company.

However, this writtendocument 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 bein 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.

Thedefendant, on the other hand, emphasized the fact that, upon examination, the plaintiff had admitted to having included the clause atissue on his own initiative in all bids submitted to the defendant, thereby granting it the right to market the software (Exhibit BS-1 of theaffidavit of Brigitte Sauvageau, Tab 4, pages 14 and 16): [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 reusedby 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. [47] According to the defendant, this admission is equivalent to a signature (hearing transcription notes of January 8, 2013, at pages128–129).

Even if it is true that the plaintiff’s admission reflects his intention, it is difficult for this Court, in light of the wording ofsubsection 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 copulativerequirements of writing and a signature. Parliament does not refer to the concept of intention at subsection 13(4) of the Act but expresslyrequires writing and a signature to render an assignment of copyright valid.

The case law has repeatedly confirmed that this is asubstantial 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 Courtthat the plaintiff submitted other bids to the defendant that include the same clause, there is nothing in the evidence to support a findingthat the bids submitted after April 2007 were signed. Furthermore, the defendant has not filed any other evidence before this Court thatcould stand in for a signature (Milliken & Co. v.

Interface Flooring Systems (Canada) Inc., (FC), [1998] 3 F.C. 103(T.D.)). [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 inthe modified SAM program. Accepting the defendant’s argument and making the opposite finding solely on the basis of the plaintiff’stestimony would render meaningless the requirement imposed by Parliament.

This finding may appear rigid, but it complies with theformal requirements of the Act. It was not enough for the representative of the defendant company (François Gagné) to avoid explicitlydealing with the issue of copyright with the plaintiff simply because, [translation] “in [his] head, it was very clear” (summary trial motionrecord, Exhibit MAD-2 of the affidavit of Marie-Anick Décarie, examination of François Gagné, page 162 (page 50, line 4 of theexamination)). [50] The defendant submitted, in the alternative, that it had paid fees to the plaintiff and that the latter had never claimed anyroyalties.

However, just because the defendant paid the plaintiff for his work does not mean that the defendant owns the copyright, andjust 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 inaccordance 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 andthe evidence, that the plaintiff granted an implied licence of use to the defendant with respect to the modified SAM program.

Thisconclusion 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 theplaintiff, not the defendant, who included it in the bids. Next, the evidence shows that the plaintiff included this clause repeatedly in allof his bids to the defendant and that this was his usual practice. The plaintiff confirmed this upon examination by explaining that thepurpose of the clause was to allow the defendant to market the modified SAM program.

The evidence also shows that the plaintiff knewthat the modified SAM program would be installed at car dealerships. The plaintiff even travelled to some of these dealerships himselfon occasion. The Court also notes that the plaintiff was paid for his work (Céjibé Communication inc. c. Construction Cleary (1992)inc., [1998] J.Q. No. 3520 (Sup. Ct.) (QL)). [53] Therefore, in light of the evidence, the Court finds that the plaintiff granted the defendant an implied licence to use the modifiedSAM program.

It has been recognized in the case law that an implied licence can be inferred from the parties’ conduct and need not bemade in writing (Silverson v. Neon Products Ltd., [1978] 6 W.W.R. 512 (B.C.S.C.); Cselko Associates Inc. v. Zellers Inc. (1992), 44C.P.R. (3d) 56 (Ont. 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 thecopyright 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. [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. Annex The relevant provisions of the Copyright Act in this case are the following:

INTERPRETATION

Definitions 2. In this Act , … “computer program” « programme d’ordinateur » “computer program” means 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; … “literary work” « œuvre littéraire » “literary work” includes tables, computer programs, and compilations of literary works; …

PART I COPYRIGHT AND MORAL RIGHTS IN WORKS Copyright

Copyright in works 3.

(1) For the purposes of this Act , “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right (

a) to produce, reproduce, perform or publish any translation of the work, (

b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work, (

c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise, (

d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed, (

e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work, (

f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication, (

g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan, (

h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program, (

i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and (

j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner, and to authorize any such acts. … Ownership of Copyright Ownership of copyright 13.

(1) Subject to this Act , the author of a work shall be the first owner of the copyright therein. (2) [Repealed, 2012, c. 20, s. 7 ] Work made in the course of employment

(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, but where the work is an

article or other contribution to a newspaper, magazine or similar periodical, there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the publication of the work, otherwise than as part of a newspaper, magazine or similar periodical. Assignments and licences

(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. Ownership in case of partial assignment

(5) Where, under any partial assignment of copyright, the assignee becomes entitled to any right comprised in copyright, the assignee, with respect to the rights so assigned, and the assignor, with respect to the rights not assigned, shall be treated for the purposes of this Act as the owner of the copyright, and this Act has effect accordingly. Assignment of right of action

(6) For greater certainty, it is deemed always to have been the law that a right of action for infringement of copyright may be assigned in association with the assignment of the copyright or the grant of an interest in the copyright by licence. Exclusive licence

(7) For greater certainty, it is deemed always to have been the law that a grant of an exclusive licence in a copyright constitutes the grant of an interest in the copyright by licence. …

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. …

PART IV REMEDIES Civil Remedies Infringement of Copyright and Moral Rights … Presumptions respecting copyright and ownership 34.1

(1) In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it, (

a) copyright shall be presumed, unless the contrary is proved, to subsist in the work, performer’s performance, sound recording or communication signal, as the case may be; and (

b) the author, performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright. Where no grant registered

(2) Where any matter referred to in subsection (1) is at issue and no assignment of the copyright, or licence granting an interest in the copyright, has been registered under this Act , (

a) if a name purporting to be that of (

i) the author of the work, (ii) the performer of the performer’s performance, (iii) the maker of the sound recording, or (iv) the broadcaster of the communication signal is printed or otherwise indicated thereon in the usual manner, the person whose name is so printed or indicated shall, unless the contrary is proved, be presumed to be the author, performer, maker or broadcaster; (

b) if (

i) no name is so printed or indicated, or if the name so printed or indicated is not the true name of the author, performer, maker or broadcaster or the name by which that person is commonly known, and (ii) a name purporting to be that of the publisher or owner of the work, performer’s performance, sound recording or communication signal is printed or otherwise indicated thereon in the usual manner, the person whose name is printed or indicated as described in subparagraph (ii) shall, unless the contrary is proved, be presumed to be the owner of the copyright in question; and (

c) if, on a cinematographic work, a name purporting to be that of the maker of the cinematographic work appears in the usual manner, the person so named shall, unless the contrary is proved, be presumed to be the maker of the cinematographic work. The following provisions of the Federal Courts Rules relating to

summary judgments are relevant to this case:

Summary Judgment and

Summary Trial Motion and Service

Motion by a party 213.

(1) A party may bring a motion for

summary judgment or

summary trial on all or some of the issues raised in the pleadings at any time after the defendant has filed a defence but before the time and place for trial have been fixed. Further motion

(2) If a party brings a motion for

summary judgment or

summary trial, the party may not bring a further motion for either

summary judgment or

summary trial except with leave of the Court. Obligations of moving party

(3) A motion for

summary judgment or

summary trial in an action may be brought by serving and filing a notice of motion and motion record at least 20 days before the day set out in the notice for the hearing of the motion. Obligations of responding party

(4) A party served with a motion for

summary judgment or

summary trial shall serve and file a defendant’s motion record not later than 10 days before the day set out in the notice of motion for the hearing of the motion.

Summary Judgment Facts and evidence required 214. A response to a motion for

summary judgment shall not rely on what might be adduced as evidence at a later stage in the proceedings. It must set out specific facts and adduce the evidence showing that there is a genuine issue for trial. If no genuine issue for trial 215.

(1) If on a motion for

summary judgment the Court is satisfied that there is no genuine issue for trial with respect to a claim or defence, the Court shall grant

summary judgment accordingly. Genuine issue of amount or question of law

(2) If the Court is satisfied that the only genuine issue is (

a) the amount to which the moving party is entitled, the Court may order a trial of that issue or grant

summary judgment with a reference under rule 153 to determine the amount; or (

b) a question of law, the Court may determine the question and grant

summary judgment accordingly. Powers of Court

(3) If the Court is satisfied that there is a genuine issue of fact or law for trial with respect to a claim or a defence, the Court may (

a) nevertheless determine that issue by way of

summary trial and make any order necessary for the conduct of the

summary trial; or (

b) dismiss the motion in whole or in part and order that the action, or the issues in the action not disposed of by

summary judgment, proceed to trial or that the action be conducted as a specially managed proceeding.

Summary Trial Motion record for

summary trial 216.

(1) The motion record for a

summary trial shall contain all of the evidence on which a party seeks to rely, including (

a) affidavits; (

b) admissions under rule 256; (

c) affidavits or statements of an expert witness prepared in accordance with subsection 258(5); and (

d) any part of the evidence that would be admissible under rules 288 and 289. Further affidavits or statements

(2) No further affidavits or statements may be served, except (

a) in the case of the moving party, if their content is limited to evidence that would be admissible at trial as rebuttal evidence and they are served and filed at least 5 days before the day set out in the notice of motion for the hearing of the

summary trial; or (

b) with leave of the Court. Conduct of

summary trial

(3) The Court may make any order required for the conduct of the

summary trial, including an order requiring a deponent or an expert who has given a statement to attend for cross-examination before the Court. Adverse inference

(4) The Court may draw an adverse inference if a party fails to cross-examine on an affidavit or to file responding or rebuttal evidence. Dismissal of motion

(5) The Court shall dismiss the motion if (

a) the issues raised are not suitable for

summary trial; or (

b) a

summary trial would not assist in the efficient resolution of the action. Judgment generally or on issue

(6) If the Court is satisfied that there is sufficient evidence for adjudication, regardless of the amounts involved, the complexities of the issues and the existence of conflicting evidence, the Court may grant judgment either generally or on an issue, unless the Court is of the opinion that it would be unjust to decide the issues on the motion. Order disposing of action

(7) On granting judgment, the Court may make any order necessary for the disposition of the action, including an order (

a) directing a trial to determine the amount to which the moving party is entitled or a reference under rule 153 to determine that amount; (

b) imposing terms respecting the enforcement of the judgment; and (

c) awarding costs.

Trial or specially managed proceeding

(8) If the motion for

summary trial is dismissed in whole or in part, the Court may order the action, or the issues in the action not disposed of by

summary trial, to proceed to trial or order that the action be conducted as a specially managed proceeding. General Right of plaintiff who obtains judgment 217. A plaintiff who obtains judgment under rule 215 or 216 may proceed against the same defendant for any other relief and may proceed against any other defendant for the same or any other relief. Powers of Court 218. If judgment under rule 215 or 216 is refused or is granted only in part, the Court may make an order specifying which material facts are not in dispute and defining the issues to be tried and may also make an order (

a) for payment into court of all or part of the claim; (

b) for security for costs; or (

c) limiting the nature and scope of the examination for discovery to matters not covered by the affidavits filed on the motion for

summary judgment or

summary trial or by any cross-examination on them and providing for their use at trial in the same manner as an examination for discovery. Stay of execution 219. On granting judgment under rule 215 or 216, the Court may order that enforcement of the judgment be stayed pending the determination of any other issue in the action or in a counterclaim or third party claim.