A-407-04
2005 FCA 332
Albian Sands Energy Inc. and Jeff Stibbard (Appellants) (Respondents by Cross-Appeal)
v.
Positive Attitude Safety System Inc., James S. Burns and Claire Burns (Respondents) (Appellants by Cross- Appeal)
Indexed as: Positive Attitude Safety System Inc. v. Albian Sands Energy Inc. (F.C.A.)
Federal Court of Appeal, Desjardins, Rothstein and Pelletier JJ.A.--Vancouver, April 14; Ottawa, October 17, 2005.
Practice --Summary Judgment--Appeal, cross-appeal from Federal Court decision partially granting appellants' motion for summary judgment--Respondents developing industrial safety system (Positive Attitude Safety System or PASS), licensing industrial enterprises to use it--Appellants implementing PASS without licence, then producing own workplace safety system (Albian Sands Environment and Safety System or ASESS)--Respondents arguing appellants' passed off their goods as those of PASS contrary to Trade-marks Act, ss. 7(b),(c), infringed copyright--Motions Judge concluding genuine issue for trial re: allegations under Act, ss. 7(b),(c), respondents having valid copyright which was infringed subject to possibility appellants' conduct authorized by licence, daily huddles part of PASS not constituting public performance of copyrighted materials--Summary judgment should have been granted re: Act, ss. 7(b),(c) claims--Summary judgment should also have been granted re: claim appellants infringed respondents' copyright by selling, renting out, exposing, offering for sale, rental PASS as appellants' motion specifically targeting that claim and motions Judge finding appellants not infringing copyright in that way--Motions Judge's conclusion copyright infringed by reproduction, distribution of PASS outside scope of motion before him, as was question of validity of copyright "at large"--These findings set aside, infringement question left to be decided by trial Judge--Conclusion no public performance of copyrighted material not disturbed--Appeal allowed; cross-appeal dismissed.
Copyright -- Infringement --Appeal, cross-appeal from motions Judge's decision, on motion for summary judgment, respondents having valid copyright which was infringed subject to possibility appellants' conduct authorized by licence--Proof of infringement requiring proof of absence of consent--Motions Judge thus erring in sending only question of effect of licence on for decision at trial, as he could not decide question of infringement without also deciding question of effect of licence.
Trade-Marks --Appeal from motions Judge's decision, on motion for summary judgment, genuine issue for trial re: allegations under Trade-marks Act, ss. 7(b) (confusion) and 7(c) (passing off)--Confusion arising from "use" of trade-mark--Use in association with wares requiring transfer of property in goods in course of trade--Appellants not engaged in trading re: ASESS (written workplace safety system)--Could therefore be no violation of Act, s. 7(b)--Act, s. 7(c) requiring there be "trade" involving trade-marks--As no allegation appellants providing ASESS to persons requesting PASS (respondents' industrial safety system), no violation of Act, s. 7(c).
This was an appeal and cross-appeal from a decision of the Federal Court partially granting the appellants' motion for summary judgment in a passing off and copyright infringement action commenced by the respondents against them.
The respondents developed an industrial safety system called Positive Attitude Safety System (PASS) and licensed industrial enterprises to use it. The appellant Stibbard implemented the PASS at Albian Sands Energy Inc., without being licensed to do so. Albian ultimately refused to seek a licence, so instead a workplace safety system called Albian Sands Environment and Safety System (ASESS) was produced. This system reproduced key features of the PASS. An action was commenced against the appellants alleging that they had passed off their goods as those of the PASS, and infringed the respondents' copyright by selling or distributing the latter's copyrighted works (the printed material which describes the PASS) and by copying these works under the name ASESS.
The appellants brought a motion for summary judgment. The motions Judge concluded that there was a genuine issue for trial with respect to the allegations under paragraph 7(b) (confusion) and paragraph 7(c) (passing off) of the Trade-marks Act. He also concluded that the respondents had a valid copyright with respect to the PASS, which had been infringed, subject however to the possibility that the appellants' conduct was authorized by a licence. On the other hand, the motions Judge found that the daily huddles which are a part of the PASS did not constitute a public performance of the copyrighted material. In the end, the motions Judge left the question as to whether the ASESS is a substantial copy of the PASS to be decided by the trial Judge.
The appellants appealed from the motions Judge's conclusion that the respondents had a valid copyright in the PASS materials which had been infringed, and his conclusions with regard to the allegations under the Trade-marks Act. The respondents cross-appealed the conclusion that there was no public performance of the copyrighted works.
Held, the appeal should be allowed; the cross-appeal should be dismissed.
Confusion arises from the use of a trade-mark. Use of a trade-mark in association with wares requires the transfer of property in goods in the course of trade. The appellants were not engaged in trading with regard to the ASESS, and no issue of confusion could arise with respect to the ASESS, considered as a trade-mark. There could therefore be no confusion and no contravention of paragraph 7(b). The absence of trading activity was also fatal to the claim of passing off contrary to paragraph 7(c), as a violation of that paragraph requires that there be trade involving trade-marks. There was no allegation that the appellants provided the ASESS to persons who ordered or requested the PASS. The passing-off claim could therefore not succeed. Summary judgment should have been granted with respect to those claims.
The appellants' motion for summary judgment specifically targeted the allegation that they had infringed the respondents' copyright by selling, renting out, exposing or offering for sale or rental the respondents' PASS. The motions Judge found that the appellants had done no such thing. The appellants were therefore entitled to summary judgment on that issue.
The question of copyright infringement "at large" was not before the motions Judge. His conclusion that there was infringement by reproduction and distribution of the PASS, subject to the effect of a licence agreement, was thus outside the scope of the motion before him. In any event, proof of infringement requires proof of absence of consent. The motions Judge could not conclude that there had been infringement before finding that the owner of the copyright had not consented to that conduct. The motions Judge erred in purporting to send only the question of the effect of the licence on for decision at trial, as opposed to the issue of infringement, as he was not in a position to decide the question of infringement without also deciding the question of the effect of the licence. The motions Judge's finding of infringement was set aside, and the question left to be decided by the trial Judge.
The appellants' motion for partial summary judgment sought only the dismissal of the claim of copyright infringement by sale, rental, exposition or offer of sale or rental. The motions Judge found that there were no facts to support that claim and was therefore bound to grant the motion for summary judgment with respect to it. The validity of copyright was not before the motions Judge. His finding that the respondents had a valid copyright was set aside.
The motions Judge's conclusion that there had been no public performance of the copyrighted material was not disturbed.
statutes and regulations judicially
considered
Copyright Act, R.S.C., 1985, c. C-42, s. 27(1) (as am. by S.C. 1997, c. 24, s. 15).
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4, 6(2),(3),(4), 7.
APPEAL and CROSS-APPEAL from a decision of the Federal Court ((2004), 33 C.P.R. (4th) 460; 258 F.T.R. 30; 2004 FC 1022) granting only part of the appellants' motion for summary judgment in the passing off and copyright infringement action commenced against them by the respondents. Appeal allowed; cross-appeal dismissed.
appearances:
Michael D. Manson and Nicholas H. Fyfe, Q.C. for appellants.
Bruce M. Green for respondents.
solicitors of record:
Smart & Biggar for appellants.
Oyen Wiggs Green & Mutala LLP for respondents.
The following are the reasons for judgment rendered in English by
Pelletier, J.A.:
INTRODUCTION
[1]This is an appeal and a cross-appeal from a decision of the Federal Court, reported at (2004), 33 C.P.R. (4th) 460, in which it granted partial summary judgment in a passing off and copyright infringement action. Both sides argue that the Court misapprehended the nature of the questions before it. For ease of reference, where there is a reference in these reasons to a party's status, i.e., appellant or respondent, it is by reference to their status in the appeal.
FACTS
[2]The respondents, James S. and Claire Burns (collectively "Burns"), developed an industrial safety system which they called Positive Attitude Safety System or PASS. They incorporated the corporate respondent, Positive Attitude Safety System Inc. (PASS Inc.), and assigned all of their intellectual property rights to the system to the corporate respondent. The respondents' system (the PASS system) consists of a series of written materials which are used by workers in a continuous work safety program.
[3]The respondents exploit their intellectual properties by licensing industrial enterprises to use their system, which they say is protected by the law of copyright and trade-mark. In 1996, they entered into a licensing agreement with BHP World Minerals for the implementation of their system at their Cannington mine in Australia (BHP Cannington). BHP Diamonds, a subsidiary of BHP World Minerals, operates the Ekati diamond mine in Canada which, for these purposes, will be referred to as BHP Ekati.
[4]In June 1997, the appellant Jeff Stibbard (Stibbard) who was then the mining manager at BHP Ekati toured the BHP Cannington mine where he learned of the PASS system. Some months later, a BHP Cannington official left a copy of the PASS Cannington handbook with Stibbard. In late 1997 and 1998, Stibbard implemented the PASS system at BHP Ekati, by reproducing and distributing the PASS materials internally, without obtaining a licence from the respondents.
[5]Stibbard was seconded by BHP Diamonds to the Muskeg River Project in November 1998. He implemented PASS at that project using copies of the material he had developed at BHP Ekati. In September 1999, when BHP terminated its interest in the Muskeg River Project, Stibbard became an employee of Western Oil Sands Inc., one of the joint venturers which continued to develop the Muskeg Lake property under the name Albian Sands Energy Inc. (Albian), the other appellant in these proceedings.
[6]After Stibbard left BHP Ekati, his successor, who had worked at BHP Cannington, took steps to regularize the use of the PASS system. As a result, PASS Inc. entered into a licence agreement with BHP Diamonds on March 3, 1999, covering the BHP Ekati mine and other BHP Diamond locations in Canada.
[7]Meanwhile, Albian and its contractors continued to use the PASS system at the Muskeg River site during October and November 1999 without being licensed to do so by the respondents.
[8]Albian ultimately refused to seek a licence to use the PASS materials at its site so Stibbard and others produced a workplace safety system which they called Albian Sands Environment and Safety System or ASESS. Stibbard has admitted that he had the PASS materials open in front of him as he developed his system. The new system reproduced key features of the PASS system.
[9]In March 2000, an employee of a contractor on the Albian site was introduced to ASESS. Having worked at BHP Ekati, he was familiar with PASS and thought that ASESS was, in fact, PASS. When he inquired, he was told that ASESS was properly licensed. However, the same employee later contacted Jim Burns and was told that ASESS was not licensed.
[10]In June 2001, PASS Inc. commenced this action against Albian and Stibbard. PASS Inc. alleges that it owns the unregistered trade-marks Positive Attitude Safety System and PASS. It also alleges that the printed materials which describe its system and which are used in connection with it, are subject to copyright and that it owns the copyright. PASS Inc. alleges that Albian and Stibbard have passed off their goods as those of PASS, contrary to paragraphs 7(b) and (c) of the Trade-marks Act, R.S.C., 1985, c. T-13. It also alleges that Albian and Stibbard have infringed its copyright by selling or distributing the works in which it holds the copyright and by copying them under the name ASESS.
[11]Albian and Stibbard brought a motion for summary judgment. In that motion they sought the following relief:
An order pursuant to Rule 216 for summary judgment dismissing:
a. the Plaintiff's claim of passing off by the corporate Defendant Albian Sands Energy Inc. ("Albian Sands"), as alleged in paragraphs 1 and 28 of the Plaintiffs' Amended Statement of Claim;
b. the Plaintiffs' claim of copyright infringement based on the Plaintiffs' allegation that the Defendants have sold, rented out, exposed and offered for sale or rental the PASS Materials or a substantial portion of one or more of the PASS Materials, as alleged in paragraphs 1 and 27 of the Plaintiffs' Amended Statement of Claim;
c. the Plaintiffs' claim of copyright infringement based on the Plaintiffs' allegation that the Defendants have performed or have caused Albian Sands' employees to perform substantial portion of one or more of the PASS Materials in public, as alleged in paragraphs 1 and 27(d) of the Plaintiffs' Amended Statement of Claim; and
d. the Plaintiffs' claim of copyright infringement with respect to each of or any of the following works:
i. ASESS Daily Action Form;
ii. ASESS Daily Quality Check Form;
iii. ASESS Daily Meeting Notes Form;
iv. ASESS HSE Tool #3;
v. ASESS Barrel Discussion Charts; and
vi. Albian Sands General Hazard Awareness & Recognition Handbook.
[12]The motions Judge's reasons say that, in response to the appellants' motion, the respondents sought an order dismissing the motion for summary judgment as well as summary judgment in their favour declaring that the appellants had infringed the respondents' copyright in the PASS system and that they had contravened paragraphs 7(b) and (c) of the Trade-marks Act. The appeal book does not contain a cross-motion for summary judgment by the respondents, nor does the motions Judge purport to dispose of such a motion. I infer from this that the respondents' request for an order was made in the context of their suggested disposition of the appellants' motion.
THE DECISION UNDER APPEAL
[13]The motions Judge began by setting out the issues as identified by the parties and then restated them as a single issue: "Is there a genuine issue to be tried with respect to the parties' submissions in this motion?"
[14]After reviewing the relevant statutory provisions and the parties' submissions, the motions Judge began his analysis with an examination of the allegation of passing off under paragraphs 7(b) and (c) of the Trade-marks Act, reproduced below:
7. No person shall
. . .
(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;
(c) pass off other wares or services as and for those ordered or requested;
[15]The motions Judge noted that no issue was raised as to whether PASS and Positive Attitude Safety System were actually trade-marks, or that they were unregistered. He acknowledged the appellants' admission that they had used the trade-marks during October and November 1999 when the PASS system was used on the Albian site without a licence.
[16]The motions Judge concluded that there was a genuine issue for trial with respect to the allegations under section 7 of the Trade-marks Act. He noted the acknowledged use of the respondent's trade-marks PASS and Positive Attitude Safety System during two months of 1999. He also queried whether the distribution of the PASS system under the ASESS name amounted to a violation of paragraph 7(b). Finally, the motions Judge commented on the appellants' argument that they were not in the business of selling safety systems.
[17]On the issue of copyright infringement, the motions Judge began by noting that the appellants did not orally, or in writing, question the validity of the copyright in the PASS system. The Judge [at paragraph 56] also noted that there was clear evidence that the appellants "reproduced textually and distributed the PASS System under a modified name for a period of two months in the Fall of 1999." There was also evidence of reproduction of PASS by the respondent Stibbard at the BHP Ekati project in 1997 and 1998, and of its distribution to employees and contractors during that time. The appellants claimed that some or all of this use was subject to a licence granted to BHP Diamonds by PASS Inc. The Judge noted the respondents' intention of calling the official who signed the licence agreement on behalf of BHP Diamonds as a witness at the trial of the matter to dispute the appellants' claim that they were licensed.
[18]The motions Judge looked for evidence that "the defendants [appellants] have sold, rented out or offered for sale or rental the PASS system." He was unable to find such evidence. He concluded that "the defendants did not sell, rent out, expose, nor offer for sale or rental the PASS System or a substantial portion thereof" (paragraph 60).
[19]Based on his findings as to the reproduction and distribution of PASS in October and November 1999, the motions Judge concluded that there was copyright infringement of the PASS system, subject however to the possibility that the appellants' conduct was authorized by a licence. On the other hand, he found that the daily huddles which are a part of the PASS system, in which workers run through a series of predefined questions, did not constitute a public performance of the copyrighted material.
[20]The motions Judge then considered the issue of whether the ASESS system was a substantial replica of the PASS system so that its production and reproduction was an infringement of the copyright in PASS. He found that the PASS system was an original work created by the use of skill, judgment and labour. Unlike PASS, ASESS was not independently created. It contains elements which are "a slightly modified expression of the same topics used under the PASS system" and which employ "synonymous vocabulary or form" (paragraph 69).
[21]The motions Judge then compared various forms from both systems and concluded [at paragraph 71] that the ASESS system contains "a certain amount of PASS components." He found that ASESS "bears a certain resemblance both in terms of quantity and quality of the methodology, to the PASS system" (paragraph 71). In the end however, the Judge left the question as to whether ASESS is a substantial copy of PASS to be decided by the trial Judge. He was of the view that not all relevant material was before the Court, as indicated by the intention of the parties to call witnesses. He also commented that not all "substantive legal material for such an issue was presented by the parties." (paragraph 74).
[22]The Judge concluded that there was a genuine issue for trial with respect to trade-mark infringement which he was unable to resolve. He made three findings with respect to copyright, namely:
(a) the respondents had a valid copyright with respect to the PASS system;
(b) there was prejudicial reproduction, distribution and exhibition of the PASS system materials, subject to the question of licensing; and
(c) there was no sale, renting out, exposition or offering for sale or rental by the appellants of the PASS system.
[23]The motions Judge then set out a detailed list of issues to be resolved by the trial Judge, many of which are outside the scope of the matters raised in the motion for summary judgment. In the end, the appellants' motion for summary judgment was granted in part.
POSITIONS OF THE PARTIES
[24]The appellants, the moving parties in the motion for summary judgment, appealed from the Judge's conclusion that the respondents had a valid copyright in the PASS materials, saying that the issue was not before him. They also allege that he erred in failing to recognize that paragraph 7(c) of the Trade-marks Act required the substitution of one product for another and in the absence of evidence of such a substitution, he should have dismissed the respondents' claim under that paragraph of the Trade-marks Act. Finally, the appellants argue that in the absence of confusion arising from use of a trade-mark in the normal course of trade, there can be no finding of passing off contrary to paragraph 7(b) of the Trade-marks Act so that the Judge ought to have dismissed this element of the claim as well.
[25]The respondents argue that the Judge's conclusion that there is a genuine issue for trial with respect to passing off is a discretionary decision and to which considerable deference is owed. The respondents also argue that it is specious for the appellants to say that the question of validity of copyright was not before the Judge when the question of infringement was before him. There can be no infringement if there is no valid copyright.
[26]In so far as the cross-appeal is concerned, the respondents PASS Inc. and Burns challenge the motions Judge's conclusion that there was no public performance of the copyrighted works. They say that the daily safety huddles were an acoustic representation of the PASS materials, which constituted a performance. PASS Inc. and Burns also cross-appeal from the motions Judge's conclusion that there was a genuine issue for trial as to whether the licence granted to BHP Diamonds would extend to the use of the PASS materials at the Muskeg River Project site in October and November 1999 since BHP Diamonds had pulled out of the Muskeg River Project by then and Stibbard was no longer its employee.
[27]In response to the cross-appeal, Albian and Stibbard say that, to the extent that the daily safety huddles involve discussion of certain flow charts, any comments made are a spontaneous, unscripted response to the material and are not a performance. In any event, the flow charts are akin to a set of instructions; there can be no copyright in an idea or in a set of instructions.
ISSUES
[28]For reasons which will become apparent, I prefer to deal with the issues raised by the parties in the following order, as opposed to the order in which they were raised in the parties' materials:
1- Did the Judge err in concluding that there was a genuine issue for trial with respect to the allegations of passing off? (appeal)
2- Did the Judge err in concluding that there was a genuine issue for trial with respect to the allegations that the appellants sold, rented out, exposed, or offered for sale or rental the PASS materials? (appeal)
3- Did the Judge err in finding that there was a genuine issue for trial with respect to the licensing of the appellants' use of the PASS system and materials? (cross-appeal)
4- Did the Judge err in finding that the respondents had a valid copyright when the issue was not before him? (appeal)
5- Did the Judge err in concluding that the ASESS safety huddle was not a public performance of the PASS safety huddle? (cross-appeal)
ANALYSIS
1- Did the Judge err in concluding that there was a genuine issue for trial with respect to the allegations of passing off?
[29]The motions Judge made certain factual determinations with respect to the appellants' dealings in the PASS system. At paragraph 50 of his reasons, the motions Judge noted that any use of PASS Inc.'s trade-marks was exclusively internal to the appellants. Later, at paragraph 58 he reported that he had not been able to find evidence indicating that the appellants had sold, rented out or offered for sale or rental the PASS system while at paragraph 60, he concluded that the appellants did not sell, rent out, expose, nor offer for sale or rental the PASS system or a substantial part thereof.
[30]Before there can be a contravention of paragraph 7(b) of the Trade-marks Act, there must be evidence of confusion or the likelihood of confusion. Confusion in relation to trade-marks is defined at subsection 6(2) of the Trade-marks Act:
6. . . .
(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[31]Confusion arises from the use of a trade-mark. The definition of "use" of a trade-mark in relation to goods is found at section 4 of the Trade-marks Act:
4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
[32]Use of a trade-mark in association with wares requires the transfer of property in goods in the course of trade. Consequently, if no goods are transferred in the course of trade, there can be no confusion. The motions Judge's factual conclusions as to the appellants' dealing with the PASS system establish that the appellants were not engaged in trading with regard to that system. There is nothing in the record to suggest that the appellants' use of ASESS, considered as a trade-mark, caused any confusion with the respondents' trade-marks.
[33]There is a suggestion that the similarity between the content of the ASESS system and the PASS system caused confusion between them but confusion, for trade-marks purposes, is confusion between trade-marks and between trade-marks and trade-names. See subsections 6(2), (3) and (4). As a result, if the appellants were not trading in the PASS system, and if no issue of confusion arises with respect to ASESS considered as a trade-mark, there can be no confusion and no contravention of paragraph 7(b).
[34]In the same way, the conclusion as to the absence of any trading activity with respect to the PASS system is fatal to the claim of passing off contrary to paragraph 7(c). In order for there to be a violation of paragraph 7(c), there must be trade involving trade-marks. Specifically, there must be a substitution of one trader's goods "as and for those ordered or requested". If there was no trading in the PASS system, there could have been no substitution of the appellants' "infringing" copies of PASS as and for those ordered or requested. There is no allegation that the appellants provided ASESS to persons who ordered or requested PASS. Consequently, this claim cannot succeed.
[35]As a result, the motions Judge's conclusions with respect to the absence of any trading activity meant that the allegations under paragraphs 7(b) and (c) were bound to fail and summary judgment should have been granted accordingly. As a result, I would allow the appeal and make the order with respect to these claims which the motions Judge should have made.
2- Did the Judge err in concluding that there was a genuine issue for trial with respect to the allegations that the appellants sold, rented out, exposed, or offered for sale or rental the PASS materials?
[36]The appellants' motion for summary judgment was very specific in terms of the relief it sought with respect to dismissal of the claim for copyright infringement. It specifically targeted the allegation that, of all the possible forms of secondary infringement, the appellants had infringed the respondents' copyright by selling, renting out, exposing, or offering for sale or rental the respondents' PASS system. As noted above [at paragraph 60] the Judge made a specific finding "that the defendants [appellants] did not sell, rent out, expose, nor offer for sale or rental the PASS System or a substantial portion thereof." This conclusion disposed entirely of the question which the appellants had put before the motions Judge so that they were entitled to summary judgment on that issue as they requested.
3- Did the Judge err in finding that there was a genuine issue for trial with respect to the licensing of the appellants' use of the PASS system and materials?
[37]The respondents take the position that there is no genuine issue for trial with respect to the issue of licensing of the appellants' use of the PASS system and materials. The question of licensing arises in the context of the motions Judge's conclusion that there was infringement by reproduction and distribution of the PASS system at the Muskeg River Project in October and November 1999, subject to the effect of a licence agreement between PASS Inc. and BHP Diamonds. The Judge left the issue of copyright infringement in other circumstances to be decided subject to the same caveat.
[38]It is to be noted once again that the motions Judge was dealing with a motion for partial summary judgment with respect to very precise questions. The question of copyright infringement "at large" was not before him. Consequently, in embarking upon this inquiry, the motions Judge was already outside the scope of the motion before him.
[39]However, even if one assumes that the motions Judge was right to consider the question, the difficulty is that copyright is defined in terms of the absence of the consent of the owner of the copyright:
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. [Emphasis added.]
Consequently, proof of copyright infringement requires proof of lack of consent. It is therefore illogical to conclude that there has been infringement, subject to the effect of a purported licence. It may be that a party has done something which, by the terms of the Copyright Act, R.S.C., 1985, c. C-42 [subsection 27(1) (as am. by S.C. 1997, c. 24, s. 15)], only the owner of the copyright may do. But, before that conduct can be defined as infringement, the judge must find that the owner of the copyright did not consent to that conduct.
[40]As a result, the motions Judge was not in a position to conclude, as he did, that the appellants infringed the respondents' copyright subject to the effect of a purported licence. Until the issue of consent was dealt with, there could be no finding of infringement.
[41]Seen in this light, the Judge did not err in sending the question of the effect of the licence on for decision at trial. To the extent that he erred, he did so in purporting to send only that question forward, as opposed to the issue of infringement for he was not in a position to decide the question of infringement without also deciding the question of the effect of the licence. Given that other issues of infringement remain to be decided, and the question of the effect of the licence is common to those issues (see paragraphs 59 and 60 of the Judge's reasons), I would set aside the motions Judge's finding of infringement and leave the question of copyright infringement to be decided by the trial Judge. It follows from this that I would dismiss this ground of the cross-appeal.
4- Did the Judge err in finding that the respondents had a valid copyright when the issue was not before him?
[42]The appellants' position is that because their motion was for partial summary judgment, the motions Judge was limited to deciding the issues raised by their notice of motion. The appellants say that they were putting into issue the facts giving rise to infringement so that the issue of validity of copyright was not in issue. As a result, they did not put before the Court their evidence, or their argument, with respect to the issue of the validity of the respondents' copyright.
[43]The respondents say that once the appellants put the question of infringement in issue, they also put in issue the question of validity for the simple reason that one can only infringe a valid copyright. As a result, the motions Judge was entitled to deal with validity, even if it was not explicitly raised in the appellants' notice of motion.
[44]It is important to understand the limited scope of the appellants' motion for partial summary judgment. It sought only the dismissal of the claim of copyright infringement by sale, rental, exposition or offer of sale or rental on the ground that there were no facts in support of that claim. The motions Judge found that, in effect, there were no facts to support that claim. He was therefore bound to grant the motion for summary judgment with respect to that claim.
[45]When the motions Judge ventured into the issue of validity of copyright, he was putting the appellants in an untenable position. They were the moving parties and they had not raised the issue of validity. They had not come to argue that the respondents' copyright was invalid and therefore did not expect to have to face an argument that it was. It may be that in another case a judge will have to decide upon the validity of the copyright in order to decide the question of infringement, but given the motions Judge's findings of fact, and the limited relief sought in the notice of motion, it was not a question which he was called upon to decide. In doing so, he deprived the appellants of the opportunity to make their case on the issue.
[46]I would therefore allow the appeal and set aside the motions Judge's finding that the respondents have a valid copyright.
5- Did the Judge err in concluding that the ASESS safety huddle was not a public performance of the PASS safety huddle?
[47]The motions Judge decided that a safety huddle was not a performance within the meaning of the Copyright Act and therefore the safety huddle could not constitute an infringement of the respondents' copyright. The motions Judge's conclusion appears to have been based on his understanding that while the questions asked at a safety huddle may have been "scripted", the answers were not so that the huddle, taken as a whole, was something other than the work in which copyright subsists. The authorities to which we were directed in the respondents' memorandum of fact and law deal with the public performance of unpublished lectures, which does not assist in the resolution of this issue.
[48]I see no reason to interfere with his conclusion on this aspect of the case. This ground of the cross-appeal is dismissed.
CONCLUDING REMARKS
[49]In the end result, the appeal should be allowed with costs. There should be an order setting aside the decision of the Federal Court Judge, dismissing the claims under the Trade-marks Act, as set out in paragraphs 1(d), 30(c) and 30(d) of the amended statement of claim and dismissing as well, the claim that the appellants have infringed the respondent's copyright by selling, renting, exposing or offering to sell or rent the respondents' works, or causing them, or substantial portions thereof to be performed in public, as set out in subparagraphs 1(b)(ii) and (iii) and paragraphs 27(b) and (d) of the amended statement of claim. There should also be an order setting aside the finding that the respondents have a valid copyright in the PASS system.
[50]The cross-appeal should be dismissed with costs.
Desjardins J.A.: I agree.
Rothstein J.A.: I agree.