Author Archives: nicola

  1. Copyright ownership issues can move in unexpected directions

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    Trying to figure out who owns a software copyright can be tricky – and if litigation ensues, the issue of ownership can move in unexpected directions, Toronto civil and commercial litigator Patrick Summers writes in Lawyers Weekly.

    “Is there an employer? Who is the employer? Has the copyright been assigned? A case involving all these questions and how an alleged copyright infringement in a software program went in an unexpected direction for the plaintiff, was recently dealt with by Federal Court of Canada,” explains Summers, partner with Birenbaum Steinberg Landau Savin & Colraine.

    In Harmony Consulting Ltd. v. G.A. Foss Transport Ltd. which was later subject to a ruling in the Federal Court of Appeal, Summers says that the court was dealing with a man identified as Chari, who had authored a software program for G.A. Foss. Harmony Consulting Ltd. was the only named plaintiff, claiming for, among other things, copyright infringement.

    “At trial, trying to justify the naming of Harmony as plaintiff, Chari testified that at the time of the software’s creation, he made a “mental assignment” of the software to Harmony,” writes Summers.

    However, he says, the trial decision determined that Chari was not even the first owner of the copyright and that the copyright could not have been assigned to Harmony. Because Chari was an officer and shareholder in a company called Atrimed Medical Supply Inc. at the time the software was written and because Harmony was not incorporated at the time, Atrimed was found to be the actual owner of the copyright.

    The “mental assignment” claim, says Summers, was also found lacking, because the assignment was not originally in writing.

    “So, even through Copyright Act rules regarding ownership seem simple and straightforward, in litigation they can be anything but,” explains Summers.

    “No doubt Harmony wanted the focus of the litigation to be on whether there was an infringement of the copyright it thought it owned, but as frequently happens when courts are asked to decide, the arguments veer off in many different directions than that which the plaintiff might have originally imagined,” he writes.

  2. Employee vs. partner decision relevant across industries

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    In upholding a Canadian law firm’s right to require that its equity partners retire at a certain age, the Supreme Court of Canada has clarified the need for detailed partnership agreements, says Toronto civil and commercial litigator Patrick Summers.

    In McCormick v. Fasken Martineau DuMoulin LLP, the Supreme Court has said Vancouver lawyer John Michael McCormick cannot proceed with his age discrimination case before the British Columbia Human Rights Tribunal.

    McCormick began working with the firm in 1970 and became an equity partner in 1979. He turned 65 in March 2010 and, following a partnership agreement to which all lawyers were subject, was due to retire on Jan. 31, 2011. But McCormick and the firm were unable to reach an agreement that would allow him to work past his retirement age, and in December 2009, McCormick commenced a proceeding with the British Columbia Human Rights Tribunal alleging the firm had discriminated against him based on his age.

    The Supreme Court’s 7-0 decision upholds a 2012 ruling by the B.C. Court of Appeal, which said a law firm partner is an employer and not an employee, and therefore not subject to the province’s human rights legislation, the Financial Post reports.

    “It’s relevant, certainly to all types of partnerships,” Summers, partner with Birenbaum Steinberg Landau Savin & Colraine, says of the ruling. “Really, it’s a distinction between being an employee and being an owner, and in that case, the Supreme Court has decided that where you’re an owner, at least under the British Columbia code, you’re not covered by the human rights legislation.

    “There is a distinction between an owner and an employee, sometimes it becomes a bit blurred in terms of large law firms, or large partnerships of any type, because there are partners that have a lot of power and there are partners that don’t have so much power,” says Summers.

    “And I think the Supreme Court seemed to leave open the door that if there was a partner that had very little control or power, that perhaps they might be considered an employee. So there’s a little wedge that was put in there that possibly, it doesn’t apply to all partners if they’ve agreed to a mandatory retirement.”

    The ruling “clarifies the status quo,” adds Summers.

    “Partnership agreements should be drafted in such a way as to make clear whether the employer wants mandatory retirement – and obviously, the clearer these agreements are, the better.”

  3. Case provides some clarity on cross-examinations

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    A recent decision by the Superior Court of Justice has brought some clarification to the scope of cross-examinations on affidavits filed for motions for summary judgments, says Toronto civil and commercial litigator Patrick Summers.

    Mars Canada v. Bemco Cash & Carry, 2014 ONSC 4172 (CanLII) is an appeal of Master Barbara McAfee’s December 2013 order requiring Mars to answer questions the manufacturer thought were “irrelevant, went beyond the proper scope of cross-examination on an affidavit or, more generally, offended the principle of proportionality,” Justice Edward P. Belobaba writes in his decision.

    In dismissing the appeal, Belobaba writes he was “not persuaded that the Master erred with regard to the proper scope of cross-examination or in the application of the principle of proportionality. In any event, the application of the proportionality principle was a matter within the Master’s discretion and should therefore be accorded considerable deference.”

    The dispute between Mars Canada and Bemco Cash & Carry et al involves the issue of the alleged importation of grey market chocolate bars and a breach of settlement agreements. Mars brought a motion for partial summary judgment on the issues of breach of agreements and punitive damages.

    Summers, who acted for the defendants, says that in motions for summary judgments, “parties are often in a real quandary when it comes to cross-examinations because some case law can be read as restricting the right of the examining party to ask questions beyond the four corners of the affidavits or request undertakings.”

    The scope of questioning on cross-examinations is an issue that will become more important in light of Supreme Court of Canada decision Hryniak v. Mauldin, 2014 SCC 7 (CanLII), which has increased the availability of summary judgment in Ontario.

    “As summary judgments are easier to obtain and are used more frequently as an alternative to trials, courts are going to grapple with how broad the questioning in a cross-examination should be and particularly how far can you compel undertakings for questions a person immediately doesn’t have the answer to,” says Summers, partner with Birenbaum Steinberg Landau Savin & Colraine.

    “And it becomes important in summary judgement because each party is supposed to put their best foot forward, and sometimes you need important information from the other side,” he says. “Frequently it’s really crucial that you get answers to undertakings or refusals.”

    Mars pointed to an obiter comment that Justice Paul Perell made in Ontario v. Rothmans Inc., 2011 ONSC 2504 (CanLII) that “a party who objects to giving an undertaking during a cross-examination for an application or motion because it would be unduly onerous to answer it should not be required to provide evidence of his or her search capabilities (or absence of them) on any subsequent refusals motion.”

    However, Belobaba notes, “even if the objecting party is not required to provide evidence of its ‘search capabilities’ at the refusals motion I note that [Perell] would still require the party to at least voice an initial objection during the cross-examination that the requested productions would indeed be unduly onerous. Having reviewed the relevant portions of the record, I can state that no such objections were made here,” leaving open whether the comments of Perell will be applied in the future.

    Summers says that since motions for summary judgments are easier to obtain – in light of the SCC’s decision in Hryniak – lawyers will have to be wary of issues of scope and proportionality at cross-examinations and how they might be applied in motions court.

    “It’s still a little unclear,” he says, “but I think the decision in Mars does open the scope and the ability to demand undertakings to some extent.”

  4. Expert evidence rules should be relaxed in summary judgment motions

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    Courts should take a more liberal approach to the rules regarding submission of expert evidence on summary judgment motions so that parties aren’t discouraged from using the process, says Toronto civil and commercial litigator Patrick Summers.

    Rule 39.02 of the Rules of Civil Procedure requires a party to seek leave from the court in order to file any new affidavits after the completion of cross-examinations in connection with a particular motion or application. However, Summers, a partner with Birenbaum Steinberg Landau Savin & Colraine, says expert evidence on a summary judgment motion deserves special consideration under the rule.

    “A motion for summary judgment is usually a final determination of liability, at least on some part of an action. If we’re going to be using it in a more frequent manner, I think the rules with respect to the introduction of expert evidence ought to be relaxed somewhat,” Summers tells “Courts should be cognizant that where liability is on the line, the default rules shouldn’t be applied as strictly.

    “I’ve done a number of trials that involved expert evidence. I would rarely consider asking someone to give an opinion unless I could provide them with all the information gleaned from examinations for discovery. Why should a motion for summary judgment be any different?”

    Summers recently convinced a master to allow the filing of an expert opinion on behalf of his client, the defendants in the long-running case of Mars Canada Inc. v. Bemco Cash & Carry Inc., 2015 ONSC 8078 (CanLII), despite having already completed cross-examinations in connection with a motion for summary judgment filed by the plaintiff. Although the decision did not go as far as to carve out special rules for summary judgment motions, Summers says the courts could find themselves considering more requests for such leave after the Supreme Court of Canada’s 2014 judgment in Hryniak v. Mauldin, which has increased the availability of summary judgment in Ontario.

    “There is little case law concerning leave to file material of the cross-examinations in the summary judgment context, but I think the courts should be giving a broad and liberal interpretation to the rules,” he says.

    Mars Canada initially sued the defendants back in 2010, alleging, in part, their grey-market importation of chocolate bars breached settlement agreements reached between the parties years before. The defendants resisted, claiming that the agreements are null and void because they constitute an unlawful restraint of trade.

    The plaintiff’s motion for summary judgment has been in the works for more than four years after a series of disagreements over production and the scope of cross-examinations. The latest dispute arose when Bemco and its fellow defendants attempted to introduce the expert opinion of Francesco Bova, a professor of accounting at the University of Toronto’s Rotman School of Management.

    Summers argued on behalf of the defendants that leave should be granted to file Bova’s evidence under Rule 39.02, since he could not have constructed his opinion without documents and information turned over by Mars Canada to the defendants after cross-examinations were partially completed.

    Mars Canada objected, claiming Bova’s report was not an admissible expert opinion, and that it failed to meet the test for leave under Rule 39.02.

    However, Master Robert Muir sided with the defendants, finding that this motion was “not the time or place to” determine the admissibility of Bova’s evidence; that task should be left to the judge hearing the summary judgment motion. Bova’s evidence met the test for leave, Muir found, because it was relevant to Bemco’s restraint of trade defence, and because it responded to matters raised in cross-examination that “could not have been fully prepared any earlier than they were.”

    “I also see no prejudice to the plaintiff. The hearing of the summary judgment motion has yet to be scheduled,” Muir stated in his decision. “The plaintiff will have a full opportunity to respond to Dr. Bova’s report if it so chooses. It will also be able to cross-examine Dr. Bova. It can object to the admissibility of the report at the return of the summary judgment motion. The additional delay occasioned by the delivery of Dr. Bova’s affidavit is not significant in the context of this summary judgment motion.”

  5. Challenge with fake websites is finding culprits

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    When an individual is victim to an online scam through a fake website, the simple part for counsel is determining on which legal grounds an action can be successfully brought against those responsible, Toronto civil and commercial litigator Patrick Summers writes inLawyers Weekly.  Read Lawyers Weekly 
    The major challenge in such a situation, he writes, is locating those behind the rogue website, and more importantly, ensuring that it is immediately shut down, however possible.

    “Contacting the police is usually a client’s first thought, but the response will likely be that, unless there is evidence somebody has been defrauded, the authorities cannot, or will not, act,” writes Summers, partner with Birenbaum Steinberg Landau Savin & Colraine. “There is an anti-fraud division of the RCMP that is available to deal with complaints of this nature.”

    Involving IT specialists is essential, Summers writes, noting, “The offending party may be anywhere in the world and the biggest problem is finding the culprits and those who are assisting them. You may be savvy enough on your own, but an experienced IT person is likely to better know ways around the various searches that can be conducted.”

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