Date: 20031203
Docket: T-806-02
Citation: 2003 FC 1415
Ottawa (Ontario), this 3rd day of December, 2003
Present: THE HONOURABLE MR. JUSTICE SIMON NOËL
BETWEEN:
MONTAGUE INDUSTRIES INC.
Plaintiff
and
DINGWELL'S MACHINERY AND SUPPLY LIMITED
Defendants
REASONS FOR ORDER AND ORDER
[1] This is a motion for an Order setting aside or varying the Order of Prothonotary M. Tabib dated November 3rd, 2003 pursuant to Rule 51, 399(2) of the Rules of the Federal Court ("the Rules") which Order reads as follows:
"1. The Plaintiff shall, no later than 30 days from the date of this order, serve on the Defendant:
a) A copy of each and every drawing, costing book, mill report book, bill of material, machine record, instruction manual and catalogue in respect of which the Plaintiff alleges that the Defendant has infringed copyright.
b) Particulars identifying each work in respect of which the Plaintiff alleges that the Defendant has infringed copyright, the date of making the work, the name of each author, the citizenship or residency of each author at the date of making the work, the name of the employer by which each alleged author was employed at the date of making of the works, and the year of death of any author that died more than fifty years before the commencement of the proceedings.
c) For each work, particulars identifying the nature of the acts by which the Defendant is alleged by the Plaintiff to have infringed copyright, specifically, whether the Defendant made two-dimensional, or three-dimensional copies and whether said copies were made from two-dimensional, or three-dimensional works.
2. Costs shall be in the cause."
[2] This Order was in response to a motion for relief from production of certain documents referred to in the Statement of Claim by the Plaintiff and a motion by the Defendant for an Order striking the Statement of Claim in its entirety. In the alternative the Defendant seeks an Order striking paragraphs 1(b)(I), 1(b)(ii) and 1(I) of the Statement of Claim, and in the further alternative an Order requiring the Plaintiff to provide documents and particulars in respect of the allegations contained in the Statement.
[3] On May 22nd, 2002 the Plaintiff issued a Statement of Claim alleging copyright infringement which relates to engineering drawings for replacement parts of a type of heavy machinery known as a pulpwood grinder and included documents such as costing books, bills of material, machine records, instruction manuals and catalogues. The Statement of Claim referred to 1000 grinder components, but it did not list the drawings or documents concerned. Furthermore, the Statement of Claim did not identify the components by way of drawing number, part number or date; nor did it include drawings and no drawings have been produced when the motions were argued initially.
[4] In an Affidavit dated August 6th, 2003, filed as part of the Plaintiff's Motion Record, Mr. Thomas Rogers, Vice-President for the said Plaintiff, affirmed that the subject matter of the litigation was a collection of more than 80,000 engineering drawings (paragraph 19 of the Affidavit), that the cost of reproduction of the collection of drawings would be 250 000.00$ (US), that the time requirement would be a minimum of 3 months (paragraph 20 of the Affidavit) and that the work required to identify the date of creation and other details found in the title block would take months at a cost of thousands of dollars (paragraph 21 of the Affidavit).
[5] At no time in Mr Rogers' Affidavit was it mentioned that the task was impossible. The only reservations made were that it was a big task to undertake and that it would be time consuming and costly.
[6] In the Plaintiff's written submissions (paragraph 33 to 35) presented to the Prothonotary, Counsel argued that the Court had an unrestricted discretion to relieve parties from the burden of producing documents as required by Rule 206. The Plaintiff relied on U.S. Surgical Corp. v. Douns Surgical Can. Ltd., (1981) Carswell Nat 126 to show how that discretion can be exercised when it is physically or mechanically difficult, if not impossible to produce a copy of an entire document.
[7] Rule 206 requires that a copy of every document referred to in pleadings must be served within 10 days following the service of the pleadings unless the party being served waives its right or that the Court orders otherwise. In the present case, no copy of the documents were served within the 10 day period. More than a year after the Statement of Claim was filed with the Court, no copy of the documents had been served.
[8] The Standard of Review on an appeal from the decision of a Prothonotary has been well established in Canada v. Aqua-Gem Investments Ltd. (1993), 149 N.R. 273 at page 295 (F.C.A.). In essence, a discretionary Order of a Prothonotary will not be disturbed on appeal by a judge unless: 1) it is clearly wrong - meaning that the exercise of the discretion was based on a wrong principle or a misapprehension of the facts; 2) the Order raises questions essential to the final determination.
[9] I have reviewed the Order and I see no reason why I should intervene. The Prothonotary was clearly not wrong in ordering the production of documents in accordance with Rule 206 and I note that the Applicant did not give any valid reasons justifying a relief from the requirement to produce documents. The Motion Record speaks for itself. Furthermore, the Order does not raise questions which are essential to the final determination. A Plaintiff has the obligation to inform the Defendant of the cause of action and the production of documents is one way of achieving this unless the Court orders otherwise. The Prothonotary's Order recognizes this obligation.
[10] I was also asked to consider a Motion to Vary the Order requiring the production of documents within 30 days in accordance with Rule 399(2). The Plaintiff filed an Affidavit from Mr. Shaun Mousseau, which affirms among other things, that the production of documents has begun, but that it will take more than 30 days to complete the work. It relies on new facts gathered since the Order was issued (see among others paragraphs 3, 4, 5, 7, 8, 9 10, and 11 of the Affidavit). Since these facts are subsequent to the making of the Order, I will grant the Motion to Vary the Order for the production within 30 days.
[11] I have read the documentation, considered the scope of work and document production to be done, the time required and have taken into consideration the fact that the Statement of Claim was filed on May 22nd, 2002 and that already one month has passed since the Order was signed. I have therefore decided that March 31st, 2004 is the new date for serving and filing the documents referred to in the Statement of Claim.
[12] Finally, if the parties are unable to agree as to the costs of these motions, they may be separately spoken to.
ORDER
THIS COURT ORDERS THAT:
- The Motion setting aside the Order of Madam Prothonotary M. Tabib dated November 3rd, 2003 is dismissed;
- The Motion to Vary the Order to permit the production of documents is granted and March 31st, 2004 shall be the date to comply with the Order.
"Simon Noël"
Judge
FEDERAL COURT
TRIAL DIVISION
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
DOCKET: T-806-02
STYLE OF CAUSE: Montague Industries Inc. v. Dingwell's Machinery and Supply
Limited
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: November 27th, 2003
REASONS FOR ORDER OF The Honourable Mr. Justice Simon Noël
DATED: December 3rd, 2003
APPEARANCES:
Mr. Norman BowleyFOR THE PLAINTIFF
Mr. David W. AitkenFOR THE DEFENDANT
SOLICITORS ON THE RECORD:
BOWLEY KERR COLLINSFOR THE PLAINTIFF
Ottawa (Ontario)
OSLER, HOSKIN & HARCOURT LLPFOR THE DEFENDANT
Ottawa (Ontario)