T-2865-81
United States Surgical Corporation (Plaintiff)
v.
Downs Surgical Canada Limited (Defendant)
Trial Division, Walsh J.—Ottawa, October 12 and
14, 1982.
Practice — Motion for order removing plaintiff's solicitors
from record — Junior formerly with law firm acting for
defendant now with solicitors for plaintiff — Junior worked on
file and privy to information given by defendant — Defendant
also seeks amendment of order concerning time for discovery
— No prejudice to defendant — Partner at plaintiff's law firm
undertaking not to discuss case with new junior — Small
number of patent firms meaning impossible for lawyers to
change firms if defendant's argument sustained — Motion for
order removing solicitors denied — Slight delay for discovery
granted as defendant's solicitors embarrassed.
Defendant's motion is for an order removing Sim, Hughes as
solicitors of record for the plaintiff in that a junior formerly
employed by the law firm acting for the defendant was now
with Sim, Hughes. The solicitor, while with his former firm,
had worked on this case and was privy to all the information
supplied by the defendant. Sim, Hughes refused to withdraw
from the record. Defendant also seeks the amendment of an
order setting out a 'time limit with respect to discovery.
Held, motion to remove law firm from record denied subject
to an undertaking; order dealing with discovery amended.
There was no suggestion of impropriety on the part of Sim,
Hughes or the lawyer who changed firms. Although the cases
relied on by the defendant lent some support to its contention,
on the facts of this case the danger of any prejudice resulting to
defendant from the lawyer changing firms was minimal or
non-existent. The lawyer could only have been assisting the
partners since he had but recently been called to the bar. Mr.
Sim could conduct this litigation without his help. Sim had
given his undertaking to the Court that he would not discuss
this case with his new junior.
There are only a few law firms in Canada specializing in
patent law and if any time a member of one of these firms went
to another the latter had to abandon all its clients with litiga
tion against parties represented by their new lawyer's former
firm, it would be almost impossible for a patent attorney to
change firms. The decision in Davey v. Woolley, Hames, Dale
& Dingwall (1982), 35 O.R. (2d) 599 (C.A.) was not intended
to be given as wide an application as defendant seeks.
While the Court had little sympathy for the request to allow
a further delay for discovery, the firm had undoubtedly been
caused some embarrassment by the junior's departure and the
Court was disposed to allow a slight additional delay.
CASES JUDICIALLY CONSIDERED
DISTINGUISHED:
Sinclair v. Ridout & Moran, [1955] O.R. 167 (H.C.);
Steed & Evans Ltd. v. MacTavish et al. (1976), 12 O.R.
(2d) 236 (H.C.); MTS International Services Inc. v.
Warnat Corporation Ltd. (1980), 31 O.R. (2d) 221
(H.C.); Davey v. Woolley, Hames, Dale & Dingwall
(1982), 35 O.R. (2d) 599 (C.A.).
REFERRED TO:
Rakusen v. Ellis, Munday and Clarke, [1911-13] All
E.R. Rep. 813.
COUNSEL:
D. F. Sim, Q.C. for plaintiff.
R. Armstrong for defendant.
SOLICITORS:
Sim, Hughes, Toronto, for plaintiff.
Rogers, Bereskin & Parr, Toronto, for
defendant.
The following are the reasons for order ren
dered in English by
WALSH J.: Defendant moves that the firm of
Sim, Hughes be removed as solicitors of record for
the plaintiff and accordingly asks for an amend
ment of the order dated September 13, 1982,
directing defendant to hold an examination for
discovery of plaintiff by October 15, 1982, and if
further answers are sought or documents are
required to move for same within two weeks after
receipt of the transcript or by November 19, 1982,
so that defendant be ordered to hold such exami
nation for discovery within four weeks from the
time plaintiff's new solicitors are retained or such
greater time as the new solicitors may require. In
the alternative if the law firm of Sim, Hughes is
not removed from the record defendant then seeks
an order amending the aforesaid order of Septem-
ber 13, 1982 so that defendant be required to hold
the examination for discovery of plaintiff at a date
four weeks from the date of the order made herein
and that if further answers are sought or docu-
ments are required to move for same within two
weeks after receipt of the transcript.
With respect to the first issue raised by the
motion the situation is an unusual one. One
Donald M. Cameron was formerly employed by
the firm of Rogers, Bereskin & Parr representing
defendant from the time he was called to the bar
in March 1981. The proceedings herein were com
menced on May 26, 1981 and Mr. Cameron had
responsibility for the file subject to the supervision
of two senior partners of the firm. He assisted in
the preparation of the defendant for the examina
tion for discovery and had attended at such exami
nation. Subsequently an interlocutory injunction
was sought in an action commenced by plaintiff
against defendant herein in the Supreme Court of
Ontario and Mr. Cameron was again involved in
all phases of preparation for argument of the
interlocutory injunction application, including
attendance of witnesses, attendance at all cross-
examinations of plaintiff's witnesses and cross-
examinations of defendant's witnesses, also attend
ing in Court on the interlocutory injunction
motion. He is accordingly privy to all information
which was supplied by defendant not only in that
action but in the present action.
On September 9, 1982, he advised the firm with
which he was associated that he was leaving and
had accepted employment with the firm of Sim,
Hughes who represent plaintiff herein, his final
working day with his former associates being Sep-
tember 24, 1982. Defendant's solicitors believe
that under the circumstances plaintiff's attorneys,
Sim, Hughes, should withdraw from the record
and cease to represent plaintiff which said attor
neys have refused to do so. It must be emphasized
that there is no suggestion whatsoever of any
impropriety on the part of Mr. Cameron or the
Sim, Hughes law firm. He was free to change his
association if he so chose, and it was by agreement
that Mr. Cameron commenced work with the Sim,
Hughes firm on October 4, taking a brief holiday
following termination of his employment with
Rogers, Bereskin & Parr on September 24.
In addition to the present case in which it was
indicated Mr. Cameron personally did consider
able work, a letter of September 28, 1982, from
Rogers, Bereskin & Parr requesting Sim, Hughes
to withdraw from the record sets out that their
firm had during the period of Mr. Cameron's
employment with them other clients involved in
litigation with clients represented by the Sim,
Hughes firm including Carling O'Keefe v. Labatts
and Anheuser-Busch and Corning Glassworks v.
Canstar et al. It is important to note that no
mention was made during the hearing on Septem-
ber 13, 1982 of the motion which led to the order
setting a time schedule for completion of the
examination for discovery of plaintiff's witness of
any problem which might arise from the departure
of Mr. Cameron from the firm representing the
defendant to join the firm representing plaintiff
although defendant's solicitors were aware at the
time as a result of his resignation on September 9.
Defendant relies on the rules of professional
conduct of the Law Society of Upper Canada, and
the cases of Sinclair v. Ridout & Moran', Steed &
Evans Ltd. v. MacTavish et al. 2 , MTS Interna
tional Services Inc. v. Warnat Corporation Ltd. 3
and Davey v. Woolley, Hames, Dale & Dingwall.'
The Sinclair v. Ridout & Moran case is not
directly in point since it dealt with a solicitor who
had been introduced by plaintiff to defendants and
had acted for both of them while they were nego
tiating for the purchase of a property and subse
quently acted for defendants when litigation arose
between the parties. In rendering judgment Chief
Justice McRuer states at page 183:
This is a principle of ethical standards that admits of no fine
distinctions but should be applied in its broadest sense ....
He also states at page 183:
' 119551 O.R. 167 (H.C.).
2 (1976), 12 O.R. (2d) 236 (H.C.).
3 (1980), 31 O.R. (2d) 221 (H.C.).
4 (1982), 35 O.R. (2d) 599 (C.A.).
Whether the defendants cunningly retained the plaintiff's
solicitor to get him away from the plaintiff under these circum
stances or not, as contended for by counsel for the plaintiff, is
probably not important, but it is an element in their whole
course of conduct and is some evidence of the conspiracy
alleged in the pleadings.
There is no such suggestion in the present case.
In the case of Steed & Evans Ltd. v. MacTavish
et al., Goodman J. at pages 237-238 states:
In the present case I have reached the conclusion that I
should not proceed to hear this motion for an interlocutory
injunction so long as the solicitors of record for the plaintiff are
the same solicitors who have always acted for the defendant
association in the past. The evidence indicates that the defend
ant association has at no time had any other solicitor. It is also
significant, of course, that the present solicitors for the plaintiff
are still acting as solicitors for at least three of the individual
defendants. In my view it would be almost impossible for them
to cleanse from their minds any information which they may
have received while acting on behalf of any of the defendants in
the past relating in any way to the subject-matter of these
proceedings. It is true that there has been no allegation or
submission made by counsel for the defendants herein indicat
ing any specific use or misuse of information obtained confiden
tially by reason of a solicitor-and-client relationship, but the
fact remains that the possibility of that occurring is very real.
He therefore adjourned the application giving
plaintiff an opportunity to obtain other counsel
and concludes at page 238:
It simply seems to me that in the interest of all parties
concerned, it is important that justice be seen to be done and in
my view that can only take place if the solicitors who in the
past were common to both parties, or at least to some of the
parties, in these proceedings, be not the solicitors for the
plaintiff.
Again the facts in the present case are substantial
ly different.
In the case of MTS International Services Inc.
v. Warnat Corporation Ltd., it is stated at page
222:
Parties to a concluded lawsuit should feel that they have been
fairly dealt with. How can they have confidence in a just result
when their former solicitor acts for the other side in a matter
where he advised both parties?
It refers to the British judgment of Rakusen v.
Ellis, Munday and Clarkes in which it was stated
at page 815:
5 [1911-13] All E.R. Rep. 813.
... I do not doubt for a moment that the circumstances may be
such that a solicitor ought not to be allowed to put himself in
such a position that, human nature being what it is, he cannot
clear his mind from the information which he has confidentially
obtained from his former client. In my view, however, we must
treat each of these cases, not as a matter of form, not as a
matter to be decided upon the mere proof of a former acting for
a client, but as a matter of substance. We must come to a
conclusion before we allow any special jurisdiction over solici
tors to be invoked, and we must be satisfied that there is real
mischief and real prejudice which in all human probability will
result if the solicitor is allowed to act.
This quotation is not of great help to defendant
since it requires the Court to be satisfied that there
will be real mischief or real prejudice which in all
human probability will result.
Finally in the only case in which the same
lawyer himself did not appear to be personally
involved with both clients, that of Davey v. Wool-
ley, Haines, Dale & Dingwall, Madame Justice
Wilson in rendering the judgment of the Court of
Appeal stated at page 601:
The basis of the plaintiff's claim is that Mr. Stevens
breached his solicitor/client duty to the plaintiff in undertaking
to represent him on this transaction when he knew that he had
a conflict of interests which impaired or was highly likely to
impair his ability to act with the plaintiff's best interests solely
and exclusively in mind. The plaintiff says that for the purpose
of ascertaining whether such a conflict exists no distinction is to
be made between Mr. Stevens, Mr. Woolley and the defendant
law firm. It is, in other words, not open to Mr. Stevens to take
refuge in the proposition that his right hand did not know what
his left hand was doing. I agree with that submission.
While these cases lend some support to defend
ant's contention and certainly it is unfortunate
that Mr. Cameron should become associated, even
as a junior associate, with a law firm which is
representing a client in litigation with a client for
whom he had personally done considerable work in
connection with that very case, I believe that on
the facts of this case the danger of any prejudice
being caused to defendant by Mr. Cameron having
joined the Sim, Hughes firm is minimal if not
non-existent.
Mr. Cameron, while probably a very competent
patent attorney could only have been assisting his
senior partners in their representation of the
defendant in view of his relatively recent admission
to the bar. Mr. Sim would not require any assist-
ance or advice from him in the conduct of the
plaintiff's case. Moreover, and what is important
Mr. Sim, a highly reputable attorney, is well
aware of the ethics of the situation, and no doubt
Mr. Cameron also understands them well. Mr.
Sim gave his undertaking to the Court that he
would in no way discuss the case with Mr. Camer-
on and offered the same undertaking on behalf of
Mr. Cameron who was present.
It is necessary moreover to look at the other side
of the picture if such an order were granted. As
Mr. Sim pointed out in argument there are com
paratively few law firms in Canada specializing in
patent law. He suggested that there are only three
in Toronto and perhaps five or six others who do
some patent work. Such cases frequently drag on
for many years. At any given time members of one
firm would represent many clients in litigation
with clients represented by members of one of the
other firms, and to conclude, which it would be
necessary to do if full effect were to be given to the
Davey v. Woolley, Hames, Dale & Dingwall judg
ment (supra) that any time a member of one firm
decides to change his association to join another
firm the latter firm must then abandon all clients
engaged in such litigation would make it almost
impossible for a patent attorney to ever change his
association. This is particularly true in the case of
a young patent attorney who might, during his
association with one firm for a four or five-year
period, have done some work on, or had knowledge
of, cases involving a great many clients of that
firm, many of whom might be engaged in litigation
with clients of the firm he proposes to join. The
latter firm would certainly not give up all these
clients in order to engage him, and he is certainly
entitled to seek employment where he chooses and
a law firm can certainly engage a former associate
of another and competing law firm. In the end
result it must all come down to a question of ethics
and each case must be looked at on the basis of its
facts. While the Davey v. Woolley, Hames, Dale
& Dingwall judgment is undoubtedly justified on
the facts before the Court in that case, I do not
believe that it was ever intended to be given as
wide an application as defendant now seeks, or
that it is in the interest of justice that this should
be done.
Even without the undertaking given by Mr. Sim
I would have concluded that this portion of
defendant's motion should be dismissed subject to
an order that Mr. Cameron will not discuss with
Mr. Sim or any members of the Sim, Hughes firm
anything whatsoever to do with this action or
disclose any information which he has acquired as
a result of the work he did on it. The undertaking
merely confirms this.
With respect to the portion of defendant's
motion seeking an amendment of the order of
September 13, 1982 so as to allow further delay
for the examination for discovery of plaintiff's
witness, I have little sympathy for this. Defend
ant's solicitors were aware on September 13 that
Mr. Cameron was leaving their employ to join the
Sim, Hughes firm but this was not mentioned. It
was made as a result of pressure from plaintiff's
solicitors to force defendant not to delay further,
and the excuse of defendant's solicitors that they
did not as of September 13 fully appreciate the
involvement of Mr. Cameron in the proceedings
and the difficulty that would be caused for them
by his absence is not an acceptable one. However,
they have undoubtedly been caused some embar
rassment and additional work as a result of this. I
am therefore disposed to amend my order of Sep-
tember 13, 1982, so as to allow a slight additional
delay on the understanding that, since plaintiff's
solicitors and their client may well have been put
to considerable inconvenience as all arrangements
had been made for the examinations to take place
on October 14 and 15, any new date fixed must be
at the convenience of Mr. Sim and his client and
defendant's solicitors will have to accommodate
themselves to such new date and not seek any
further delay. Such examination shall be held in
Toronto within two weeks from the date of this
order subject to the convenience of Mr. Sim and
his client and if further answers are sought or
documents are required following such examina
tion defendant must move for same within one
week after receipt of the transcript, and in any
event no later than November 19, 1982, the date
set in the original order.
ORDER
Motion to remove the firm of Sim, Hughes as
solicitors of record for the plaintiff is dismissed
subject to the undertaking of Mr. Sim and Mr.
Cameron not to discuss this action and Mr. Cam-
eron not to reveal to Mr. Sim or any other mem
bers of the Sim, Hughes law firm any information
he may have obtained while representing defend
ant.
The order of September 13, 1982, directing
defendant to hold an examination for discovery of
the plaintiff by October 15, 1982 is amended so as
to direct that such examination for discovery shall
be held in Toronto within two weeks from the date
of this order subject to the convenience of Mr. Sim
and plaintiff. Said order is further amended to
require that if further answers are sought or docu
ments required they must be moved for within one
week after receipt of the transcript and in any
event by November 19, 1982.
Costs of the motion are in favour of plaintiff in
any event of the cause.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.