Digests

Eros-Équipe de recherche opérationnelle en santé Inc. v. Conseillers en gestion et informatique C.G.I. inc.

T-687-88

2004 FC 178, Tremblay-Lamer J.

3/2/04

78 pp.

Action in which plaintiff Eros-Équipe de recherche opérationnelle en santé Inc. (Eros) suing defendants Conseillers en gestion et informatique CGI inc. (CGI), Régie régionale de la santé et des services sociaux de Québec (Régie de Québec) jointly and severally and Régie régionale de la santé et des services sociaux de la Montérégie (Montérégie) for infringement of its copyright under Copyright Act (Act) with respect to use of literary work titled Classification (des bénéficiaires) par types (des programmes) en milieu de soins prolongés (CTMSP)--Defendants Régie de Québec and Montérégie both corporations created pursuant to Quebec Act respecting health services and social services--Eros business for evaluation, design, realization and implementation of management systems in health field--Eros alleged Régie de Québec infringed copyrights by authorizing reproduction of significant portions of CTMSP forms when SIBPA software (information system for non-independent beneficiaires) designed by CGI; by authorizing translation of CTMSP into data processing language by CGI; by reproducing CTMSP work at time of use of SIBPA; by authorizing use of infringing SIBPA software, and consequently reproduction of CTMSP at time of use; and by placing infringing work in circulation so as to injure Eros, by offering software to all boards--Eros alleged Montérégie reproduced its CTMSP work in using SIBPA--It alleged CGI reproduced significant portions of its CTMSP work in designing SIBPA--By incorporating CTMSP forms in SIBPA software CGI reproduced them, but in data processing language--Régie de Québec alleged could not be held responsible for damages caused by design of SIBPA since could rely on benefit of immunity of Crown in right of province--When Régie de Québec acts in specific mandate from Department of Social Affairs (DSA) (now ministère de la Santé et des Services Sociaux), status as agent obvious, enjoys Crown immunity (R. v. Eldorado Nuclear Ltd., [1983] 2 S.C.R. 551)--Copyright Act not stating applies to Crown--Accordingly necessary to analyse provisions of Act to determine whether Crown can be made subject to Act by implication--Crown, agents cannot take advantage of legislative provisions, then ignore resulting burdens--DAS made use of provisions of Act--Close nexus between benefit provided by exclusive licence, namely right to use work to exclusion of any other person, and burden not to infringe rights assigning party has chosen not to assign, here right to electronic application of work--DAS, agents therefore bound by provisions of Act, cannot rely on Crown immunity--Régie de Québec exceeded mandate conferred by DAS when infringed Eros' copyrights, consequently lost immunity--Civil law cannot be source of defendant's fault in case of copyright infringement, since Act provides what acts can be infringement of copyright, what remedies available-- Evidence conclusive Régie de Québec aware of Eros' copyrights--Eros maintained each of defendants infringed copyrights, either by performing one of acts mentioned in Act, s. 3 or by authorizing them--Act, s. 27(1) provides infringe-ment of copyright for any person to do, without consent of owner of copyright, anything that by Act only owner of copyright has right to do--S. 27(2) states distribution of work that infringes copyright of another person also infringement of copyright--Criteria for determining whether reproduction of substantial part of work qualitative-- Defendants admitted guide for using SIBPA software reproduces substantial parts of CTMSP forms, which clearly indicates defendants appropriated gist of CTMSP work-- CTMSP forms contained in Régie de Québec software word for word, in infringement of Act, ss. 3(1)(a), 27(1)--Régie de Québec accordingly authorized infringing acts by defendant CGI, predecessors-- Anyone authorizing infringement commits infringing act in same way as entity which performs act--CGI, Régie de Québec therefore jointly, severally liable for these acts-- Montérégie did not participate in design of SIBPA, but admitted it used this software, as did several other regional boards--Reproduction of work by Régie de Québec, Montérégie on computers infringement of plaintiff's copyright --Aside from reproduction on screen, evidence showed SIBPA generated printed reports which were themselves reproductions of substantial parts of CTMSP forms, another infringement of Eros' copyright--S. 27(2)(c) provides infringement when any person distributes disputed work so as to prejudicially affect owner of copyright--Evidence clearly showed defendants Régie de Québec, CGI "distributed" SIBPA software, several boards used it--Since copyrights relating to CTMSP duly registered, CGI must rebut presumption it had reasonable grounds to suspect work protected--Mere fact never problem of infringement before not meaning infringement not something to be considered when form incorporated in new software word for word, especially when copyright notice reproduced at several places in document--Therefore reasonable to believe copyright existed on CTMSP work and CGI did not rebut presumption created by Act, s. 39--Régie de Québec, CGI infringed plaintiff's copyright within meaning of Act, s. 27(2)(c) by distributing disputed work in manner prejudicial to Eros--Act, s. 34 indicates remedies available to injured copyright holder and s. 35 deals with damages to which entitled to remedy infringement--On losses relating to electronic exploitation of CTMSP, amount of $200,000 reasonable for cost of designing SIBPA--To this amount Court added $70,000 to allow for amounts spent by Régie de Québec to make subsequent modifications to SIBPA software, totalling $270,000--Then necessary to apply Eros' beneficiary margin of 53.72%, to obtain amount of profits lost, which comes to $312,729--Eros would have received expenses for annual maintenance of its electronic CTMSP software--At undisputed rate of 17%, this represents annual amount of profit loss of $53,164, amount which will have to be increased in accordance with Consumer Price Index from 1986, date of infringement, to 1992, date SIBPA ceased to be used by defendants--On losses associated with loss of earnings on sales of PLAISIR software (electronic planning of nursing care required), this head of damages based on assumption infringing software SIBPA partly took over market for PLAISIR software--Question as to how plaintiff could sell product and then continue to make purchaser pay for using product--Inevitable CTMSP software would have competed with Eros' PLAISIR product--Since Court must avoid overlaps and duplications, Eros cannot claim for both damages relating to use of PLAISIR and damages relating to computerization of CTMSP--Eros claimed damages against Montérégie based on its use of SIBPA software--Eros did not show cessation of use of PLAISIR in Montérégie directly related to use of SIBPA--In case at bar appropriate to award nominal damages of $10,000 to plaintiff--Eros also claimed punitive damages from defendants--As regards Régie de Québec, Montérégie and CGI, absence of evidence of malicious intent or intent to injure eliminated possibility of punitive damages--Eros entitled to interest at 5% rate from date action served, namely April 1988--Finally, CGI appealed in warranty based on failure of Régie de Québec to perform duty of information in contract for design of SIBPA--Régie de Québec not opposing appeal in warranty for damages caused by actions of CGI's predecessors either before or after action filed--Appeal in warranty allowed against Régie de Québec for damages which CGI ordered to pay in this case, with costs against Régie de Québec--Action allowed--Court ruled inter partes original literary work CTMSP protected work, plaintiff sole owner of copyrights therein--Copyright Act, R.S.C.c 1985, c. C-42, ss. 3 (as am. by S.C. 1988, c. 65, s. 62; 1993, c. 23, s. 2; c. 44, s. 55; 1997, c. 24, s. 3), 27 (as am. by S.C. 1997, c. 24, s. 15)--An Act respecting health services and social services, R.S.Q., c. S-4.2.