Delrina Corp. v. Triolet Systems Inc. et al., (2002) 156 O.A.C. 166 (CA)

• Judge: Morden, Carthy and MacPherson, JJ.A.
• Court: Court of Appeal (Ontario)
• Case Date: March 01, 2002
• Jurisdiction: Ontario
• Citations: (2002), 156 O.A.C. 166 (CA)

Delrina Corp. v. Triolet Systems Inc. (2002), 156 O.A.C. 166 (CA)

MLB headnote and full text

Temp. Cite: [2002] O.A.C. TBEd. MR.003

Delrina Corporation carrying on business as Carolian Systems (plaintiff/appellant) v. Triolet Systems Inc. and Brian Duncombe (defendants/respondents)

(C30375)

Indexed As: Delrina Corp. v. Triolet Systems Inc. et al.

Ontario Court of Appeal

Morden, Carthy and MacPherson, JJ.A.

March 1, 2002.

Summary:

The plaintiff claimed that the defendants' computer software program, known as "Assess", infringed its copyright in its program known as "Sysview". The plaintiff commenced an action against the defendants to stop them from using and selling the computer program. The plaintiff obtained interlocutory injunctions restraining the defendants' activities. Eventually the plaintiff's action was dismissed and the injunctions dissolved. The defendant claimed damages as a result of the injunctions.

The Ontario Court (General Division), in a decision reported 69 O.T.C. 1, allowed the defendants' claim and assessed damages accordingly. The plaintiff commenced two appeals, one regarding the dismissal of its copyright infringement action and one regarding the assessment of damages respecting the injunction.

The Ontario Court of Appeal dismissed the appeals.

Copyright - Topic 1025

Works subject to copyright - Particular works - Computer programs - While employed with Carolian Systems, Duncombe rewrote a performance monitoring computer program called "Sysview" - Immediately after leaving Carolian, Duncombe designed a program called "Assess" to be functionally similar to "Sysview" in order to compete with "Sysview" - Carolian Systems sued for copyright infringement - The trial judge dismissed the action - Carolian appealed, arguing that the trial judge erred in denying copyrightability to much of "Sysview" and the judge made this error, in large part, by relying on United States law without regard to the significant differences between the copyright law United States and Canada - Carolian argued that based on these authorities, the learned trial judge ignored the fact that "Sysview" met the standard set under the Copyright Act of being "original" - The Ontario Court of Appeal dismissed Carolian's appeal - See paragraphs 1 to 82.

Copyright - Topic 4553

Infringement of copyright - Acts not constituting an infringement - Copying or using computer programs - [See Copyright - Topic 1025 ].

Evidence - Topic 2401

Special modes of proof - Presumptions - Specific presumptions - Inference from failure to call or adduce available evidence - While employed with Carolian Systems, Duncombe rewrote a performance monitoring computer program called "Sysview" - Immediately after leaving Carolian, Duncombe designed a program called "Assess" to be functionally similar to "Sysview" in order to compete with "Sysview" - Carolian Systems sued for copyright infringement and obtained an interlocutory injunction - The trial judge dismissed the action - The injunction was dissolved and damages were awarded in favour of Duncombe - Carolian appealed, arguing that the trial judge erred in: (a) drawing an adverse inference that Carolian did not produce a privileged expert's report because it would not have been helpful to Carolian; and (b) finding that the motions judge might have declined to award an interlocutory injunction had he been made aware of the report - The Ontario Court of Appeal rejected this ground of appeal, holding that the inference was not a factor in the judge's decision regarding copying - See paragraphs 58 to 81.

Injunctions - Topic 4591

Operation of injunctions - Dissolution - Damages - While employed with Carolian Systems, Duncombe rewrote a performance monitoring computer program called "Sysview" - Immediately after leaving Carolian, Duncombe designed a program called "Assess" to be functionally similar to "Sysview" in order to compete with "Sysview" - Carolian Systems sued for copyright infringement and obtained an interlocutory injunction - The trial judge dismissed the action - The injunction was dissolved and damages were awarded in favour of the company Duncombe worked for totalling $6,892,500 - Carolian appealed - The Ontario Court of Appeal dismissed the appeal and refused to disturb the award - See paragraphs 83 to 108.

Cases Noticed:

Gondos v. Hardy (1982), 64 C.P.R.(2d) 145 (Ont. H.C.), refd to. [para. 10].

Boudreau v. Lin et al. (1997), 38 O.T.C. 39; 75 C.P.R.(3d) 1 (Gen. Div.), refd to. [para. 10].

Shewan v. Canada (Attorney General) (1999), 87 C.P.R.(3d) 475 (Ont. S.C.), refd to. [para. 10].

Bright Tunes Music Corp. v. Harrisongs Music Ltd. (1976), 420 F.Supp. 177 (U.S. Dist. Ct.), refd to. [para. 10].

Ladbroke Ltd. v. Hill (William) Football Ltd., [1964] 1 All E.R. 465 (H.L.), refd to. [para. 22].

Richardson (John) Computers Ltd. v. Flanders, [1993] F.S.R. 497 (Ch. D.), refd to. [para. 25].

Prism Hospital Software Inc. v. Hospital Medical Records Institute (1994), 57 C.P.R.(3d) 129 (B.C.S.C.), refd to. [para. 25].

Moreau v. St. Vincent, [1950] Ex. C.R. 198, refd to. [para. 33].

Apotex Inc. v. Wellcome Foundation Ltd. (2000), 10 C.P.R.(4th) 65 (F.C.A.), refd to. [para. 36].

University of London Press Ltd. v. University Tutorial Press Ltd., [1916] 2 Ch. 601, refd to. [para. 39].

Computer Associates International Inc. v. Altai Inc. (1992), 23 U.S.P.Q.2d 1241 (2nd Cir.), refd to. [para. 43].

Ibcos Computers Ltd. v. Barclays Finance Ltd., [1994] F.S.R. 275 (Ch. D.), refd to. [para. 46].

Apple Computer Inc. et al. v. Mackintosh Computers Ltd. et al. (No. 1), [1987] 1 F.C. 173; 3 F.T.R. 118; 10 C.P.R.(3d) 1 (T.D.), affd. [1988] 1 F.C. 673; 81 N.R. 3; 18 C.P.R.(3d) 128 (F.C.A.), affd. [1990] 2 S.C.R. 209; 110 N.R. 66, refd to. [para. 49].

Talbot v. Pan Ocean Oil Corp. (1977), 4 C.P.C. 107 (Alta. App. Div.), refd to. [para. 76].

Pocklington Foods Inc. v. Alberta (Provincial Treasurer) (1995), 165 A.R. 155; 89 W.A.C. 155; 28 Alta. L.R.(3d) 96 (C.A.), refd to. [para. 76].

Taylor v. R. (1977), 5 B.C.L.R. 23 (S.C.), refd to. [para. 76].

Bates v. Stubbs (1979), 15 B.C.L.R. 65 (C.A.), refd to. [para. 76].

Schiowitz v. I.O.S. Ltd., [1972] 2 O.R. 262 (C.A.), refd to. [para. 76].

Designers Guild Ltd. v. Williams (Russell) Textiles Ltd. (Trading as Washington D.C.), [2001] W.L.R. 2416 (H.L.), refd to. [para. 81].

Hutton and Denali Music Ltd. v. Canadian Broadcasting Corp. (1992), 120 A.R. 291; 8 W.A.C. 291; 41 C.P.R.(3d) 45 (C.A.), refd to. [para. 81].

International Pediatric Products Ltd. v. Lambert (1967), 66 D.L.R.(2d) 157 (B.C.C.A.), refd to. [para. 87].

Hoffmann-La Roche & Co. et al. v. Secretary of State for Trade and Industry, [1974] 2 All E.R. 1128 (H.L.), refd to. [para. 87].

Douglas v. Bullen (1913), 4 O.W.N. 1587 (H.C.), refd to. [para. 87].

Vieweger Construction Co. v. Rush and Tompkins Construction Ltd., [1965] S.C.R. 195, refd to. [para. 87].

642947 Ontario Ltd. v. Fleisher et al. (2001), 152 O.A.C. 313; 56 O.R.(3d) 417 (C.A.), refd to. [para. 87].

Canada Metal Co. v. Canadian Broadcasting Corp. (No. 2) (1974), 4 O.R.(2d) 585 (H.C.), refd to. [para. 93].

Woelk v. Halvorson, [1980] 2 S.C.R. 430; 33 N.R. 232; 24 A.R. 620, refd to. [para. 106].

Authors and Works Noticed:

Morgan, Michael F., Canadian Copyright and Computer Software: Back to the Future? (1995), 12 C.I.P.R. 162, pp. 173, 174 [para. 34].

Sookman, Computer, Internet, and Electronic Commerce Law (1991), p. 3-151, fn. 644.117 [para. 35].

Sopinka, John, Lederman, Sidney, and Bryant, Alan W., The Law of Evidence in Canada (2nd Ed. 1999), p. 297 [para. 67].

Spencer Bower, George, Turner, Alexander, and Handley, K.R., The Doctrine of Res Judicata (3rd Ed. 1996), pp. 79, 80 [para. 76].

Watson, The Civil Litigation Process - Cases and Materials (5th Ed. 1999), p. 535 [para. 77].

Counsel:

Nigel Campbell, Anthony Prenol and George Fisk, for the appellant;

F. Paul Morrison, Barry B. Sookman, and T. James Treloar, for the respondents.

This appeal was heard on September 19, 20 and 21, 2001, before Morden, Carthy and MacPherson, JJ.A., of the Ontario Court of Appeal. Morden, J.A., delivered the following decision for the Court of Appeal on March 1, 2002.