) ) ATTORNEY GENERAL OF CANADA Plaintiff – v. –, 2013 ONSC 2747

CITATION : A.G.C. v. Madeleine Rundle c.o.b. NEC PLUS ULTRA 2013 ONSC 2747 COURT FILE NO.: 09-46989 DATE: 2013/05/14 ONTARIO SUPERIOR COURT OF JUSTICE BETWEEN: ) ) ATTORNEY GENERAL OF CANADA Plaintiff – and – MADELEINE RUNDLE C.O.B NEC PLUS ULTRA Defendant ) ) ) ) ) ) ) ) ) ) Alexandre Kaufman, for the Plaintiff No one appearing for the Defendant ) ) ) HEARD: April 18, 2013 (Ottawa) supplementary REASONS FOR decision Beaudoin j. Introduction [ 1 ] On April 18 th , 2013 I heard the Plaintiff’s motion, seeking the following relief:

i) summary judgment against the Defendant for breach of confidence; ii)

summary judgment against the Defendant for copyright infringement; iii) a permanent injunction enjoining Madeleine Rundle, NEC Plus Ultra or any employees of NEC Plus Ultra from copying, reproducing, distributing, making available to the public or to any clients of NEC PLUS Ultra and/or offering for sale, in any form and in any place, any portion of the Plaintiff’s Second Language Evaluation Tests; and iv) striking the Defendant’s Statement of Defence. [ 2 ] After hearing the submissions of counsel and upon my review of the Affidavits and Exhibits filed, I was satisfied that the Defendant Madeleine Rundle c.o.b.

NEC Plus Ultra (“Rundle”) had been duly served with the Notice of Motion and all the supporting materials by courier, by regular mail, by registered mail and by e-mail and that she has simply refused to take any notice of what has been delivered to her. I granted all of the relief sought at the motion and awarded the Plaintiffs costs on a substantial indemnity basis in the amount of $19,256.67. I directed that there be a trial on the issue of damages. These supplementary reasons expand on the oral reasons given on that date.

Background [ 3 ] The Plaintiff, Attorney General of Canada (“Canada”) has brought this claim in relation to the Second Language Evaluation (“SLE”) reading and writing tests, developed and scored by the Public Service Commission (“PSC”), and administered to over 20,000 individuals each year to assess their second language proficiency according to government standards. These SLE tests are copyrighted, confidential, and developed at great cost to taxpayers.

Their value derives from the fact they are not known to the public. [ 4 ] Through the affidavit of Robert McSheffrey, Canada has established that the Defendant has surreptitiously obtained and used confidential SLE test content without the PSC’s consent. Ms. Rundle has admitted that she compiled practice test questions from her students’ recollection of the official tests after they took them. She was also able to obtain, copy, and distribute exact photocopies of certain SLE tests. In doing so, she gave her students an unfair advantage over other applicants to federal jobs, she undermined the PSC’s

ability to fulfill its mandate and caused it to incur the expense of creating new SLEs to replace the versions she compromised. Striking the Defendant’s Statement of Defence and Counterclaim [ 5 ] The Defendant has not shown an active interest in defending this action since her counsel obtained an Order removing them as solicitors of record on October 5, 2012. [ 6 ] Rule 15.04 of the Rules of Civil Procedure provides that a party shall either appoint a new lawyer or serve a notice of intention to act in person within 30 days after being served with the order removing counsel from the record.

Sub rule 15.04(9) gives the court the discretion to strike out a defense where the Defendant has not appointed a new lawyer of record by serving a notice of intention to act in person within 30 days after being served with the order removing their lawyer from the record. [ 7 ] This Court has previously decided that it is an appropriate exercise of discretion under sub rule 15.04(9) to dismiss a claim where a party does not show an active interest in prosecuting the action. [1] The Defendant has not appointed new counsel or taken the necessary steps to defend herself, she has taken no steps to respond to this motion.

In these circumstances, I strike her Defence and Counterclaim. Test on a motion for

summary judgment [ 8 ] Rule 20 provides that a moving party is entitled to

summary judgment where there is no genuine issue requiring a trial. The purpose of Rule 20 is to eliminate unnecessary trials. A judge may dispose of cases on the merits where the interests of justice do not require a trial. [2] [ 9 ] In order to determine if the interests of justice require a trial, the motions judge must apply the full appreciation test as set out in Combined Air Mechanical Services Inc. v. Flesch , 2011 ONCA 764 . Although the Defendant has chosen to not respond to this motion, I must still be satisfied on my review of the evidence that

summary judgment should be granted The Defendant’s unauthorized access and use of the SLE tests [ 10 ] The affidavit of Robert McSheffrey discloses that, in September 2007, a public servant enrolled in training with the Defendant to prepare for the SLE writing test. After taking the official exam administered by the PSC, she reported that the practice tests given to her by the Defendant were very similar to the official test.

The Personnel Psychology Centre (“PPC”), the unit of the PSC responsible for developing the tests, compared the Defendant’s practice test to the official SLE test and concluded that they were “practically identical”. [ 11 ] The PSC launched an audit to determine whether, and if so, how, the Defendant had gained unauthorized access to SLE Reading and Writing tests belonging to the PSC. The audit concluded that the Defendant had unauthorized access to the PSC’s tests, and that its students had obtained success rates that far exceed those of the general population taking these tests.

Defendant’s admissions [ 12 ] As part of its audit, the PSC interviewed the Rundle, who provided testimony under oath. She initially denied having provided the impugned practice tests to her students, or asking her students about the questions on the official SLE tests. [ 13 ] In this action, the Defendant admitted however that she created the practice tests based on information derived from her students. She admitted compiling tests based on information her students provided her after taking the official PSC SLE test.

At her examination for discovery she admitted: Q: So did I not understand you correctly that people would, after taking the official test, people would come back to you with problem areas? A: That’s correct. Q: And you would write down what the problem was? A: That’s right. Q: And you compiled some sort of practice material based on that? A: Yes. [ 14 ] At discovery, she further admitted possessing, copying and using a photocopy of SLE nr. F630 C1 at her language school. The Defendant also admitted that she created, used and made copies of tests she labelled

“Expression Écrite, Revue de la lecture 2 and Expression Écrite” but which are identical or near identical to the PSC’s SLEs F650D2, F630D2, and F651A1. Infringement of the PSC’s new SLE tests after action began [ 15 ] After the release of the Audit in 2009, the PSC discontinued the use of the English and French SLE tests which it had concluded had been compromised. The PSC replaced them with new tests, which it developed at great expense. The new French tests included the F632 B1 Test of Reading Comprehension and the F 653 B2 Test of Written Expression.

The PSC also took additional steps to enhance the security measures in place to protect its tests. [ 16 ] During examinations for discovery, on April 27, 2012 Rundle testified that she discontinued the practice of basing her practice tests on input from her students who took the PSC’s Reading and Comprehension tests. However, in March and April of 2012 the PSC received information from Ms.

Marion Braid, a public servant and former student of the Defendant, indicating that she had received preparation materials which the PSC has determined breaches the PSC copyright over the new Test of Reading Comprehension F632 B1, which was implemented after the release of the Audit. [ 17 ] In her affidavit filed in support of this motion, Ms. Braid testified that the Defendant provided practice materials to her just prior to taking the PSC test, and that the Defendant instructed her to destroy the materials once she passed the test. Ms.

Braid also testified that after she took the test, the Defendant asked her to disclose questions from the exam. [ 18 ] Captain Trevor Norton also filed an affidavit in support of the motion. He enrolled in French language training courses with the Defendant in mid-March 2012. He provided the PSC with practice material he received from the Defendant. After taking the official PSC Reading Comprehension test, Captain Norton concluded that the practice test he received from the Defendant was “identical or near identical” to the PSC test.

Captain Norton also confirms that the Defendant asked him to destroy the materials she had given him. [ 19 ] Another affidavit was filed on behalf of Major DeBruin who also attended Nec Plus Ultra for French training in April and May of 2012. He was also provided with practice materials and was instructed not to take one particular version out of the Defendant’s office.

After taking the official PSC test, Major DeBruin reported that it was “extremely close, if not the same” as the Defendant’s practice material. [ 20 ] The Defendant has admitted that she created and used the tests labelled “Expression Écrite” and “Revue de l’Écrit 2” which were provided to the PSC by Messrs. DeBruin and Norton and Ms. Braid. Comparison between the PSC’s official tests and the Defendant’s practice materials [ 21 ] The PSC compared its official tests F630C1, F630D2, F632B1, F650D2, F651A1, F653A1 and F653B2 to the tests Ms. Rundle admitted having created and used, and the tests Ms.

Braid, Captain Norton and Major DeBruin provided to the Plaintiff. It found that the vast majority of official test questions were reproduced in the Defendant’s practice materials. These confidential documents have been submitted to me for review and I have come to the same conclusion. Interim injunction granted on July 27, 2012 [ 22 ] On July 27, 2012 the Honourable R.

Smith J. granted an injunction enjoining the Defendant from copying, reproducing, distributing, making available to the public or any clients of Nec Plus Ultra or offering for sale, in any manner with questions that are substantially similar to the PSC’s Second Language Evaluation Tests F632 B1 and F653 B2 until the trial or other disposition of this action or further order of the Court. [3] Breach of Confidence [ 23 ] Three elements must be established to make out a claim for breach of confidence: a. The information conveyed must be confidential; b.

The information must have been communicated in confidence, and c. The information must have been misused by the party to whom it was communicated to the detriment of the party who confided it. [4]

a) SLE Tests are confidential [ 24 ] The SLE tests are confidential and treated as such. All SLE test booklets are marked “Protected B” on the cover and on every page of the test booklet containing test content. The Treasury Board security policy defines “Protected B” as information which, if compromised, could result in grave injury, such as loss of reputation or competitive advantage.

[ 25 ] Test administrators must protect the security of the test materials at all times. Testing material must be stored in a locked cabinet in a closed room. No part of any test material may be reproduced, and no test material can be left unattended while a test is being administered. Any material that is not accounted for must be reported immediately to the PPC. The Federal Court of Canada has recognized the confidentiality of the PSC’s standardized tests as “an important aspect of the merit principle” in Attorney General of Canada v.

Gill : The legislative objective of the Public Service Employment Act is to ensure that appointments made within the Public Service are based on selection according to merit.

To that end, this Court has consistently recognized the importance of maintaining the confidentiality of standardized tests on the grounds that disclosure of confidential test materials to public servants and others likely to take such tests could place them in a position to acquire information concerning expected responses and to use that information in future competitions or disseminate it to others, either intentionally or unintentionally.

If the Commission cannot assure an appeal board that test has not been compromised by retaining control of that test, it cannot be used as an assessment tool and must replace it at great cost. Confidentiality of test materials is therefore an important aspect of the merit principle. [5]

b) SLE Test questions are communicated in confidence [ 26 ] The administration manual for SLE tests advises test administrators of the protected nature of the tests and underscores the importance of test security. The manual also includes instructions for test takers advising them that they are not to share test content with anyone and of the consequences of so doing. On the inside of the test booklet the Crown copyright is clearly noted. [ 27 ] The PSC takes steps to prevent copying and warns test takers not to share the test content with anyone.

It can be assumed that the Defendant, an experienced teacher, knew about the confidential nature of these tests. The Defendant admitted that she compiled tests based on her students’ recollection of the official exams. Marion Braid, one of her students, testified that shortly after taking the official test, the Defendant asked her if she could recall any of the questions, and asked her to confirm if there were any questions about certain topics.

Moreover, the Defendant tried to hide her actions by asking her students to destroy her materials after use and attempted to convince several students not to provide evidence to the PSC. [ 28 ] The Supreme Court held that there is a breach of confidence when, as here, a third party comes into possession of confidential information with the knowledge that it was communicated in confidence: Equity, as a court of conscience, directs itself to the behavior of the person who has come into possession of information that is in fact confidential, and was accepted on that basis, either expressly or by implication.

Equity will pursue the information into the hands of a third party who receives it with the knowledge that it was communicated in breach of confidence (or afterwards acquires notice of that fact even if innocent at the time of acquisition) and impose its remedies. It is worth emphasizing that this is a case of third party liability. The appellants did not receive the confidence from the respondents, but from the now defunct Caesar Canning.

The receipt, however, was burdened with the knowledge that its use was to be confined to the purpose for which the information was provided… [6] [ 29 ] The existence of a relationship between the parties is not required for the cause of action to arise.

Rather, the issue is whether “the information is indeed confidential and whether the circumstances of the disclosure are such that the recipient of the confidential information would know that the information is confidential”. [7] In this case, the Defendant knew that the SLE tests could not be used as assessment tools once they became public, yet she methodically sought out information communicated to her students in confidence for the sole purpose of recreating them.

c) Defendant used confidential SLE tests to the Plaintiff’s detriment. [ 30 ] The Defendant’s use of the PSC’s confidential SLE tests caused it financial harm and undermined the Government’s statutory obligations. Since the release of the PSC Audit, the PSC discontinued the use of the SLE tests which it had concluded had been compromised. The PSC replaced them with new tests, which it developed at great expense. [ 31 ] In addition to the financial harm, the Defendant hampered the Federal government’s ability to perform its statutory duties.

English and French are the official languages of Canada, and have equality of status and equal rights and privileges as to their use in all institutions of the Parliament and the Government of Canada. Persons who are able to practice on materials that are substantially the same as the official SLE tests will have an unfair advantage compared to other test-takers.

Allowing unqualified persons to obtain excellent French SLE scores and to acquire bilingual positions in the Public Service undermines its ability to serve the public in the official language of choice . [ 32 ] The PSC is the branch of the federal public administration responsible for safeguarding the integrity of staffing processes of the Federal Government. One of the cornerstones of public service staffing is that appointments are made on the basis of merit.

The PSC is statutorily required to ensure that persons appointed to the public service meet the essential qualifications of the position, including official language proficiency. As Mr. McSheffrey testified, the Defendant’s infringement undermines the integrity of public staffing: […] using that test content to prepare her students for these tests undermines the integrity of staffing processes by unfairly advantaging those having access to these materials and introducing significant doubt about the validity of the results they obtain.

It poses a serious risk to ensuring positions are staffed with qualified persons and according to merit. It has negative consequences for peoples’ careers. [8]

[33] The Defendant surreptitiously obtained confidential test materials belonging to the PSC and used them for financial gain. Sheobtained the information from her students, who knew that they were under a duty not to disclose them. There is no genuine issuerequiring a trial on the Plaintiff’s claim for breach of confidence. She has done so to the detriment of the Plaintiff.

Summary judgmentought to be granted for Defendant’s Breach of Confidence.

Summary Judgment for Copyright Infringement

a) Copyright in the SLE tests belongs to Her Majesty the Queen [34] Pursuant to

section 12 of the Copyright Act, where a work has been prepared or published under the direction or control of HerMajesty or any government department, the copyright in the work shall belong to Her Majesty: 12.

Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under thedirection or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with theauthor, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.[9] [35] The PSC employs public servants to develop the SLE tests. Her Majesty retains the copyright and does not relinquish it toanyone.

The SLE tests have the words “Crown Copyrights Reserved” printed on them. The PSC has never authorized the Defendant touse, copy or possess SLE tests. In any proceedings for infringement of copyright in which the Defendant puts in issue either the existence of the copyright or the title of the Plaintiff thereto, copyright is presumed, unless the contrary is proved.[10] In the context of thePlaintiff’s motion for an injunction, the Defendant admitted that the Crown retained copyright in the SLE French Language testsprepared by the PSC.

b) The SLE tests are “literary works” within the meaning of the Copyright Act [36]

Section 5 of the Copyright Act states that copyright shall subsist “in every original literary, dramatic, musical and artisticwork”. In CCH Canadian Ltd. v.

Law Society of Upper Canada, 2004 SCC 13 , [2004] 1 S.C.R. 339, at para 25, the SupremeCourt held that to be considered “original” and thereby attract copyright protection, what is required is the exercise of skill and judgmentthat is not so trivial that is could be characterized as a purely mechanical exercise: 25 For these reasons, I conclude that an "original" work under the Copyright Act is one that originates from an author and is notcopied from another work. That alone, however, is not sufficient to find that something is original.

In addition, an original work must bethe product of an author's exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be sotrivial that it could be characterized as a purely mechanical exercise. While creative works will by definition be "original" and coveredby copyright, creativity is not required to make a work "original". [37] What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. I am satisfiedthat the SLE tests meet the definition of original work.

Their authors exercise considerable skill and judgment in producing anevaluative tool to assess candidates’ second language abilities. Producing SLE tests requires expertise, judgment and experience. [38] Examinations and standardized tests are entitled to copyright protection. In University of London Press v.

University Tutorial Press, which the Ontario Court of Appeal described as a “leading authority”[11], the High Court of the United Kingdom held thatmathematics examination papers developed for the University of London were “literary works” within the meaning of the Copyright Act.[12] Similarly, in Educational Testing Services v.

Katzman,[13] the United States Court of Appeal for the Third Circuit held thatquestions developed by the Plaintiff for the Scholastic Aptitude Test (SAT), a multiple choice test given to high school students forcollege admission purposes, were “original works of authorship” and entitled to copyright protection. (

c) Definition of Copyright [39]

Section 3 of the Copyright Act defines copyright as a set of rights which belong exclusively to the copyright holder. Itincludes the sole right to produce or reproduce a work, or any substantial part thereof, in any material form whatever: 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 anysubstantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work isunpublished, to publish the work or any substantial part thereof, and includes the sole right […] (

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

and to authorize any such acts.[14] [40] The Copyright Act defines “infringement” in relation to a work in which copyright subsists, as “any copy, including any colourable imitation, made or dealt with in contravention of this Act”. [15] Pursuant to

section 27, it is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that the Act confers only to the owner of the copyright.[16] [41] The copying need not be direct to constitute copyright infringement. The Ontario Court of Appeal held that “copying” in thelaw of copyright “goes beyond copying from something that is physically before the person who copies. It includes copying from memory, even subconscious memory”.[17] It is also well established that it is immaterial whether the infringing

article is derived directlyor indirectly from the original work. A plaintiff must show, on an objective basis, that the original work - or a substantial part thereof - has been reproduced.[18] (

d) Defendant has infringed her Majesty’s Copyright [42] A comparison of the original and infringing copies shows that the vast majority of official test content is reproduced, found, in some form, in the Defendant’s practice materials.[19] Moreover, the Defendant had, and continues to have, access to test content throughher students. She admitted in her Statement of Defence, and on discovery, that she based her practice materials on “problem areas” thatwere reported to her by students who had taken the test. Moreover, Ms.

Braid testified that the Defendant asked her if she could recall any questions from the PSC’s exam.[20] Should a Permanent injunction be granted? [43] The Plaintiff asks that the interim injunction already granted be made permanent.

Section 34 of the Copyright Act providesthat an owner of copyright is entitled to an injunction and delivery up of infringing copies: 34.

(1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.[21] [44] Where infringement has been established, the owner is prima facie entitled to an injunction restraining further infringementand for delivery-up of all infringing copies: [45] Case law indicates that the owner of a copyright who has demonstrated infringement can be granted a permanent injunctioneven if he or she has not proven or suffered damages. In R. v.

James Lorimer and Co., (FCA), [1984] 1 F.C. 1065(C.A.), Mahoney J.A., for the Court, at p. 1073, explained the following regarding injunctions and delivery up: The Act is clear. Infringement does not require that the infringing work compete in the marketplace with that infringed; it requires onlythat the infringer do something that the copyright owner alone has the right to do. It follows that, where infringement of copyright hasbeen established, the owner of the copyright is prima facie entitled to an injunction restraining further infringement.

It likewise followsthat, where the infringing work is found to include any substantial part of a work in which copyright subsists, the copyright owner is tobe deemed owner of all copies of the infringing work and all production plates and is prima facie entitled to the assistance of the Court ingaining possession of them. The onus is on the infringer to establish grounds upon which the Court may properly exercise its discretionagainst granting such relief. [Massie & Renwick, Limited v.

Underwriters' Survey Bureau Limited et al., (SCC), [1937]S.C.R. 265.] Those grounds must lie in the conduct of the copyright owner, not in the conduct or motives of the infringer. The fact thatthe copyright owner has suffered no damages as a result of the infringement is not a basis for refusing an injunction. [Bouchet v. Kyriacopoulos (1964), 45 C.P.R. 265 (Ex. Ct.); appeal dismissed, [1966] S.C.R. v.].[22] [46] The onus is on the infringer to establish grounds against granting this relief. The Defendant has not done so in this case.Accordingly,

summary judgment is granted for breach of copyright and a permanent injunction is granted enjoining Madeleine Rundle,c.o.b.

Nec Plus Ultra, or any other employee of Madeleine Rundle or Nec Plus Ultra from copying, reproducing, distributing, makingavailable to the public or any of her clients or offering for sale, in any manner and in any place, practice tests with questions that aresubstantially similar to the Public Service Commission’s Second Language Evaluation Tests F630 C1, F630 D2, F632 B1, F650 D2,F651 A1 and F653 B2. [47] There will be an order that exhibits “C”, “D”, “E”, “F”, “G”, “H”, “I”, “J”, “K”, “L”, “M” and “N” of the Affidavit of RobertMcSheffrey, sworn February 7, 2013 and exhibits “A” to the Affidavits of Marion Braid (sworn May 31, 2012), Trevor Norton (swornJune 26, 2012) and James DeBruin (sworn June 27, 2012) be sealed protecting these exhibits from public disclosure.

These may bereturned to the Plaintiff following the elapse of the time within which to bring an appeal of this decision.

Mr. Justice Robert Beaudoin Released: May 14, 2013 CITATION : A.G.C. v. Madeleine Rundle c.o.b. NEC PLUS ULTRA 2013 ONSC 2747 COURT FILE NO.: 09-46989 ONTARIO SUPERIOR COURT OF JUSTICE BETWEEN: ATTORNEY GENERAL OF CANADA Plaintiff – and – MADELEINE RUNDLE C.O.B NEC PLUS ULTRA Defendant SUPPLEMENTARY REASONS FOR DECISION Mr. Justice Robert Beaudoin Released: May 14, 2013