) ) POLAR WIRELESS CORPORATION Plaintiff – v. –, 2013 ONSC 1155

CITATION : Polar Wireless Corporation v. Roberts, 2013 ONSC 1155 DIVISIONAL COURT FILE NO.: 565/12 DATE: 20130225 ONTARIO SUPERIOR COURT OF JUSTICE DIVISIONAL COURT BETWEEN: ) ) POLAR WIRELESS CORPORATION Plaintiff – and – STEVEN J. ROBERTS, JACK ROBERT LEE, 1271583 ONTARIO INC., CHUN- WING LEE, 1177153 ONTARIO LIMITED, MARILYN SCHAFFER, XTM INCORPORATED and GO TO WIRELESS INC. Defendants )) )) )) )) )))))) Mark Veneziano & Andrew M. Porter , for the Plaintiff (Responding Party) David N.

Bleiwas , for the Defendants, Marilyn Schaffer and XTM Incorporated (Moving Parties) ) ) ) HEARD: January 21, 2013 LEDERER J. : Introduction [ 1 ] The plaintiff, Polar Wireless Corporation (“Polar”), is a wireless technology company based in Toronto that provides alternative roaming solutions. It offers its mobile phone customers the ability to roam internationally without needing to change phone numbers or switch SIM cards.

Polar sells a “SIM Overlay” device which provides a connection to the Polar network of international carriers, which provides Polar users with access to local networks while roaming. [ 2 ] Pursuant to an order made on November 16, 2012, an interlocutory injunction was granted in Polar’s favour enjoining the defendants, including Marilyn Schaffer (“Schaffer”) and XTM Incorporated (“XTM”), from: • seeking to do business with carrier and distribution opportunities developed while at Polar; • taking any affirmative steps under agreements cultivated at Polar; and, • using or disclosing any and all confidential and/or proprietary information belonging to Polar; as well as • to return any confidential information; • to preserve any information, electronic or otherwise, relating to Polar, its technology, business and operations. [ 3 ] The order required an expert, on behalf of Polar, to attend at the premises of the defendants to create “forensic images of all

physical and electronic devices and copies of data stored remotely… used by the… defendants in the last calendar year which containedconfidential information of Polar…”. [4] On December 18, 2012, a further endorsement was made. It amended the order made on November 16, 2012. Among otherthings, the court ordered that the part of the order requiring the creation of the forensic images and copies be stayed as against Schafferand XTM (see: order, dated November 16, 2012, at paras. 3 and 6). [5] On this motion, Schaffer and XTM seek leave to appeal the injunction insofar as it is made against them.

Background [6] The defendant, Steven J. Roberts (“Roberts”), was the president of Polar. As president, he retained Schaffer and XTM toprovide certain branding and marketing services to Polar. Polar contends that Schaffer was in charge of identifying any potentialshortcomings in the look, feel or functionality of the product. The project commenced on or about April 1, 2012. It is alleged thatSchaffer was in regular attendance at the offices of Polar, asked questions of Polar’s management and employees who, in turn, relied onXTM’s branding and marketing expertise.

It is said that Schaffer gained an intimate knowledge of Polar’s marketing strategy andbusiness plan, as well as valuable confidential knowledge respecting Polar’s user experience. Schaffer says that she and XTM had noaccess to high level proprietary information. As she sees it, most of the documentation in the possession of XTM was created formarketing and branding purposes. Why this could not be considered important or proprietary was not explained. [7] On June 28, 2012, Roberts was terminated as president of Polar.

According to Schaffer, the new president asked XTM tosuspend providing services so he could familiarize himself with the situation. It became apparent that the work was not going to re-commence. Although Schaffer claims that there had been no indication of dissatisfaction with any of the work that had been done, thenew president evidently expressed unhappiness with the brand name that had been proposed for the service Polar sought to market. Onbehalf of XTM, it is alleged that Polar did not pay outstanding invoices.

In response, Schaffer registered domain names that utilized thenames of the new president of Polar and another individual who was also associated with Polar. She said she would write a blog“outlining the irregularities…with the way you are doing business”. Schaffer says she apologized the next day. XTM commencedlitigation and, in an action separate from this one, sued Polar. For its part, Polar says that Schaffer unilaterally terminated the agreementbetween XTM and Polar.

It alleges that, on the day following the termination of Roberts, Schaffer demanded payment from Polar inrespect of what is referred to as “the incomplete mandate”. Polar disputes that it is under any obligation to make any further paymentsunder the contract. [8] In the meantime, Roberts incorporated the defendant, Go To Wireless Incorporated (“GTWI”). It is a competitor of Polar.On the motion for the injunction, the judge found that Roberts was soliciting business opportunities of Polar, on behalf of GTWI, withinseven days of his departure from Polar.

Roberts and Schaffer both say that she is not an officer, director, shareholder or employee ofGTWI. She says that she has had no involvement in GWTI’s investor presentations or product development and has had no dealings withPolar’s “alleged” carrier, distribution or supplier partners. Roberts says that Schaffer had no involvement in management meetings orinvestor presentations. On the other hand, there is the similarity between the brand name XTM was involved in developing for Polar(“GoGo”) and the new business (“Goto”).

There is the suggestion that XTM stopped any work on registering the “GoGo” trademarkdespite the explicit instructions of the new president to process the application. Instead, Schaffer registered the domain name“www.gotowireless.com”. It turns out that the registered address of the new company is the office of XTM. Moreover, Schaffer’sbiography and photograph were included in the investor presentation. Roberts apparently has said that he had a hope or expectation thatSchaffer and XTM would become involved with GTWI in the future, although the biography and picture were included without herconsent.

The Decision of the Judge [9] The motions judge canvassed recent authority on the applicable test for injunctive relief set out in RJR MacDonald Inc. v.Canada (Attorney General), (SCC), [1994] 1 SCR 311 and its modified application in cases involving the enforcementof a negative covenant. The judge noted that the three parts of the test are not to be applied in isolation.

The consideration given to thesecond and third parts of the test (“irreparable harm” and “balance of convenience”) will be directly influenced by the first (the “strengthof the plaintiff’s case”) (see: Van Wagner Communications Company, Canada v. Penex Metropolis Ltd., [2008] O.J. No. 190 (S.C.J.), atpara. 39). [10] In applying the test, the judge determined that Roberts owed a fiduciary duty to Polar. She determined that there was a strongprima facie case that he had breached that duty. He used the same relationships developed at Polar for his own benefit at GTWI to thedetriment of Polar.

The judge went on to find that there was a strong prima facie case that “the other defendants”, as a result of havingjoined Roberts at GWTI, were impressed with the same breach of fiduciary duty (see: Precision Fine Papers Inc. v. Durkin, [2008] O.J.No. 703 (S.C.J.), at paras. 22-23). [11] Consistent with Van Wagner Communications Company, Canada v. Penex Metropolis Ltd., supra, the motions judgedetermined that, as a result of having found that Polar had a strong prima facie case, the second and third parts of the injunction testcould be applied less rigorously than might otherwise have been the case.

She agreed that Polar would suffer irreparable harm if theinjunction was not granted. The potential loss of market share could be significant and would certainly be difficult to quantify given thatPolar and GWTI were attempting to obtain market share in the same emerging line of business. The judge found that the balance ofconvenience favoured Polar. It had been actively engaged in pursuing alternative roaming solutions for several years and had investedsignificant amounts of money to develop its product.

If the injunction was not granted, it would be greatly affected by the potential lossof market share in an emerging market. GTWI had been involved in the business of providing alternative roaming solutions for a veryshort period of time. [12] It is on this basis that she granted the injunction. The Test for Leave to Appeal

[13] This motion for leave to appeal is brought pursuant to Rule 62.02(4) of the Rules of Civil Procedure. It requires adetermination that there is a conflicting decision in circumstances where the judge hearing the motion is of the opinion that it is desirablethat leave be granted (see: Rule 62.02(4)(a)) or, in the alternative, a finding that there is good reason to doubt the correctness of the orderin question accompanied by the judge being of the opinion that the proposed appeal involved matters of such importance that leave toappeal should be granted (see: Rule 62.02(4)(b)).

Analysis [14] This motion for leave is brought on behalf of only Schaffer and XTM and not the other defendants. In short, it is submittedthat Schaffer and XTM had no fiduciary relationship with Polar, possess no information that could be confidential to it and have no directinvolvement with GTWI. The difficulty with the way this has been put is that it would require me to make findings that should be left forthe trial judge. [15] There is a clear disparity between the parties as to the extent of Schaffer’s involvement in the business of Polar and the natureand importance of the information she obtained.

This has to be determined. It would require a trial to sort out the difference. [16] Schaffer says that, with the change in leadership at Polar, XTM was prepared to continue with the work for Polar. Polar takesthe position that she and XTM unilaterally ended the contract. Schaffer and XTM say that Polar refused to pay outstanding accounts.Polar denies it owes any money to XTM.

A determination of these differences would, at a minimum, set a foundation to come to anunderstanding of what took place thereafter. [17] Schaffer acknowledges that she registered domain names that used the names of people involved with Polar and threatened towrite a blog that would outline irregularities in their business practices. It does not seem out of line to suggest that this may point to ananimus she and XTM felt towards Polar. This could influence an understanding of what followed.

In the context of this motion, I amasked to discount these actions on the basis that they were taken out of frustration and that she apologized the next day. [18] Schaffer did not register the GoGo trademark for Polar. Polar says her instructions were to complete this work. In response,Schaffer relies on the understanding that the new president did not like the name and that the GoGo brand was not a priority for him.Schaffer did not consider it urgent to proceed. It could be that, as she suggested, this was because she was not being paid.

On the otherhand, when contrasted with the fact that, at about that time, she registered the GoTo wireless domain name, one can see the possibilitythat it might be determined that her allegiance had shifted. This is underscored by the fact that the address used by GTWI as its place ofbusiness is the office of XTM. It is added to by the fact that Schaffer was associated with GTWI through the use of her photograph andbiography in its investor presentation.

It may be that Roberts included this without her permission, but the fact that he had the hope, eventhe expectation, that she and XTM would become involved with GWTI, raises the possibility that she had already played a role in itsactivities. [19] In order to determine that there was reason to doubt the correctness of the finding of the motions judge that there was a strongprima facie case against not just Roberts, but one that implicated those associated with him, including Schaffer and XTM, I would haveto decide these issues in favour of Schaffer and XTM.

To the contrary, to me, there is enough that is not contested that points to thestrong prima facie case, as found by the motions judge, that the other defendants, including Schaffer and XTM, were “…impressed withfiduciary duties having joined Mr. Roberts at Go To which is a company that is clearly competing with Polar in the alternative roamingsolutions industry” (see: Polar Wireless Corporation v. Roberts 2012 ONSC 6482, at para. 55).

By way of example: • Schaffer and XTM were retained by Roberts and did work for Polar respecting the marketing and branding of its product. • Once Roberts was replaced, Schaffer threatened to harm the business of Polar by publishing information about its businesspractices and acted on the threat by registering domain names, which included the names of people associated with Polar. • Schaffer registered the GoTo domain name for GTWI, which is similar to GoGo. • Schaffer’s picture and biography was used by Roberts in the investor presentation in the hope and expectation that she would cometo play a role at GWTI. • The address given by GWTI was the place of business of XTM. [20] It was open to the motions judge to impress Schaffer and XTM with the fiduciary obligations of Roberts.

There is no reasonto doubt the correctness of her decision. It is not open to serious debate (see: Judson v. Mitchele 2011 ONSC 6004 , at para. 15).As was repeated in Precision Fine Papers Inc. v. Durkin, supra, (at para. 22): Were it otherwise the fiduciary would be permitted to do indirectly what he or she cannot do directly Canadian Industrial DistributorsInc. v. Dargue, (ON SC), (1994), 7 C.C.E.L. (2d) 60 (Ont. Gen. Div.); DiFlorio v. Con Structural Steel Ltd., (2000), (ON SC), 6 B.L.R. (3d) 253 (S.C.J.), aff'd., (ON CA), (2001), 21 B.L.R. (3d) 22 (Ont.

C.A.). [21] This specific determination was applied by the motions judge (see: Polar Wireless Corporation v. Roberts, at paras. 56 and59). In the circumstances, it is not necessary for me to consider whether this involves matters of such importance that leave should begranted. [22] In the factum filed on behalf of Schaffer and XTM, it is said that the primary basis for the decision of the motions judgeagainst Schaffer and XTM is the finding that: …it would not be inconvenient to Ms.

Schaffer and XTM to be subjected to an injunction, if the Court finds one is warranted, if it is Ms.Schaffer’s position that she is not part of the management team and she has no access to confidential information. The injunction wouldnot be inconvenient to Ms.Schaffer or XTM but would provide protection needed for Polar if Ms. Schaffer and XTM’s positions are notfound to be credible at trial.

( Polar Wireless Corporation v. Roberts , supra, at para. 59 ) [ 23 ] Counsel for Schaffer and XTM submitted that this finding of the motions judge was in conflict with an earlier decision. He referred to the case of Law Society of Upper Canada v.

MacNaughton 1942 CarswellOnt 332, [1942] O.W.N. 551, at para. 1 , where it is said that: …to warrant the Court in granting an injunction it must be reasonably satisfied that there is an intention on the part of the defendant to do the acts sought to be restrained, or at least that there is probable ground for believing that, unless the injunction be granted, there is danger of such acts being done; and that it is not a sufficient ground for granting an injunction that, if there be no such intention, it will do the defendant no harm.

I have always understood the rule to be that the question is not whether the injunction will harm the defendant, but whether it is probable that unless the defendant is restrained, wrongful acts will be done which will do the plaintiff irreparable injury. And I have thought that upon an application of an interlocutory injunction great care ought to be taken to see that unless the injunction is granted the act sought to be restrained is really likely to be done before the trial… [ 24 ] This case was reported in 1942.

Certainly, the words reveal considerations applicable to the second and third parts of the test found in RJR MacDonald Inc. v. Canada (Attorney General), supra. Nonetheless, the test has been significantly refined since then. Leave to appeal an interlocutory injunction was granted, but no reference was made to the requirement that there be an evaluation as to the prospective merits of the plaintiff’s case as is now required by the first part of the test. To the contrary, the court observed: I say nothing about the very interesting question raised by Mr.

Walker as to whether the Law Society really has a cause of action, assuming the defendant MacNaughton is holding herself out as a member of the Society, but is not in fact practising as a barrister or solicitor. That question may in a certain event become important in the Court of Appeal or at the trial. ( Law Society of Upper Canada v. MacNaughton, supra, at para. 5) [ 25 ] Moreover, as the motions judge determined, as it stands today, the law says that, where a strong prima facie case is found, the consideration of the second and third elements of the test need not be as rigorous.

To plug in the proposition found in the quote from Law Society of Upper Canada v. MacNaughton, supra, relied on by Polar, would ignore this refinement in the law. It would make the second and third parts of the test the pre-eminent considerations. The case does not conflict so much as it is out-of-date. [ 26 ] Even if there was a conflict apparent, it would not support an opinion that it is desirable that leave be granted. The decision of the motions judge should not be understood in the narrow and limited way the position taken on behalf of Schaffer and XTM suggests.

Her reasons reveal a careful and complete analysis of the test applicable to the granting of an interlocutory injunction. She found that there was a strong prima facie case made out against Roberts which, in the circumstances, bound the other defendants. She understood that this finding had an impact on the consideration of the remaining two parts of the test, but found that there was a threat of irreparable harm to Polar and that the balance of convenience lay in its favour. It was not a determination based on a lack of inconvenience to Schaffer and XTM.

Given the substance of the analysis of the motions judge, there would be no purpose in granting leave to appeal on the basis of a conflict between her decision and the reasons found in Law Society of Upper Canada v. MacNaughton, supra. [ 27 ] Finally, in the evidence filed on behalf of Polar, it was suggested that it may have to close down as a result of insufficient funds. As a result, it was suggested that Polar should be required to post security in respect of the undertaking as to damages made at the time of the hearing before the motions judge and referred to in the

preamble to her order. This was not raised or considered in her reasons. Moreover, it is unclear why this would be of particular concern to these appellants, as opposed to those who acknowledge their involvement with GTWI and are not parties to this motion. Conclusion [ 28 ] For the reasons referred to, the motion is dismissed. It follows that the stay imposed by paragraph 6 of the order, dated November 16, 2012, is lifted. Costs [ 29 ] The parties agreed that costs in the amount of $2,750.00 should follow the event.

Accordingly, costs in that amount are ordered to be paid by the moving parties (Marilyn Schaffer and XTM Incorporated) to the responding party, Polar Wireless Corporation. LEDERER J. Released: 20130225 CITATION : Polar Wireless Corporation v. Roberts, 2013 ONSC 1155 DIVISIONAL COURT FILE NO.: 565/12 DATE: 20130225

ONTARIO SUPERIOR COURT OF JUSTICE DIVISIONAL COURT BETWEEN: POLAR WIRELESS CORPORATION Plaintiff – and – STEVEN J. ROBERTS, JACK ROBERT LEE, 1271583 ONTARIO INC., CHUN-WING LEE, 1177153 ONTARIO LIMITED, MARILYN SCHAFFER, XTM INCORPORATED and GO TO WIRELESS INC. Defendants JUDGMENT LEDERER J. Released: 20130225