T-2865-81
United States Surgical Corporation (Plaintiff)
v.
Downs Surgical Canada Limited (Defendant)
Trial Division, Mahoney J.—Toronto, October 19;
Ottawa, October 23, 1981.
Copyright — Infringement — Plaintiff alleges ownership of
copyright in certain drawings representing cartridges of staples
it markets for use in place of sutures in surgery, and infringe
ment of copyright by defendant — Plaintiff deleted certain
information from the copies of the drawings on the ground it
wishes to maintain that information secret and confidential —
Whether a party can be permitted to assert his copyright in an
entire work and the infringement of that right, while refusing
to divulge the entire work — Federal Court Rule 407(2).
Sitwell v. Sun Engraving Co., Ltd. [1937] 4 All E.R. 366,
agreed with.
APPLICATION.
COUNSEL:
Donald F. Sim, Q.C. for plaintiff.
M. Eberts and D. Cameron for defendant.
SOLICITORS:
Donald F. Sim, Q. C., Toronto, for plaintiff.
Rogers, Bereskin & Parr, Toronto, for
defendant.
The following are the reasons for order ren
dered in English by
MAHONEY J.: This is an action for the infringe
ment of a number of patents and also the copy
right the plaintiff claims to own in certain draw
ings. The defendant moved for certain particulars
as to the patent aspect. The plaintiff also moved
for judgment under Rule 433 but did not press its
motion. These reasons deal only with the copyright
aspect of the action. My intention in other areas
was indicated from the bench.
The devices in issue are cartridges of staples
used in place of sutures in surgery. The defendant
advertises its devices as fitting the plaintiff's sta
pling instruments. As to the alleged infringement
of copyright, the substance of the claim is that the
defendant's cartridges, as physical objects, produce
or reproduce the representations of the plaintiff's
cartridges that appear on the drawings.
Paragraphs 31 to 38 of the statement of claim
assert the plaintiff's copyright in the drawings. It
is sufficient to recite paragraph 31. The others are
essentially the same for all purposes relevant to
this application.
31. The Plaintiff is the owner of copyright in Canada in a
literary or artistic work namely a drawing No. C3853600,
dated 7 / 1 3/71 and drawn by Paul Palansky, who is alive, is a
citizen of the United States of America and was in the employ
ment of the Plaintiff under a contract of service at the time he
drew the work. The work was made in the course of his
employment. This work is a representation of the Plaintiffs
disposable loading units marketed by the Plaintiff under the
trade marks Auto Suture, 30-3.5 and 30-4.8.
Paragraph 39(a) alleges the infringement of the
copyright asserted in paragraph 31. Again, it is
unnecessary to recite subparagraphs (b) to (h)
which relate to the drawings described in para
graphs 32 to 38.
39. The Defendant has without the consent or permission of
the Plaintiff caused to be manufactured, has manufactured, has
imported into Canada, offered for sale, distributed and sold in
Canada or in the alternative, intends to cause to be manufac
tured, to manufacture, to import into Canada, offer for sale,
distribute and sell in Canada disposable loading units which
units produce or reproduce the works described in paragraphs
31 to 38 above and thereby infringe the Plaintiff's copyright
aforesaid. In particular, the Defendant's disposable loading
units infringe the copyright as follows:
(a) the Defendant's disposable loading units or cartridges
designated as 30 MED and 30 LG produce or reproduce the
work in drawing No. C3853600, described in paragraph 31
above;
The Federal Court Rules provide:
Rule 407. .. .
(2) A copy of every document referred to in a pleading shall
be served on each party on whom a pleading is served at the
same time as the pleading is served or within 30 days of that
time, unless
(a) such party waives his right to such copy; or
(b) the Court, for special reason, otherwise orders.
In its purported compliance with that requirement,
the plaintiff has deleted certain information from
the copies of the drawings. That information falls
into four categories:
1. References to parts drawings and to compo
nent part numbers.
2. Descriptions of revisions to the drawings.
3. Assembly specifications and tolerances.
4. In some instances, dates of the original
drawings.
The deletions, other than category 4, are said to be
vital commercial information which the plaintiff
wishes to maintain secret and confidential.
As to category 1, a competitor having the refer
ences to parts drawings and component part num
bers would be able to approach the plaintiffs
suppliers and seek to acquire the drawings and
identical parts to those incorporated by the plain
tiff into its cartridges. As to category 2, revisions
are said to have been minor but, nevertheless, their
precise nature and dates would give a competitor
valuable assembly, manufacturing, design, and,
quality control information in identifying areas
where the plaintiff has found specifications and
tolerances of critical importance. The nature of the
category 3 information is self-explanatory of the
plaintiffs wish to keep it confidential. No good
reason for withholding the category 4 information
was advanced; these dates are, as a matter of fact,
all alleged in the statement of claim.
The weight of authority clearly lies in favour of
requiring production, pursuant to Rule 407(2), of
the complete document referred to in a pleading.
The Rule does, however, give the Court a discre
tion. The defendant argues that the discretion is
intended only to embrace cases where it would be
physically or mechanically difficult, if not impos
sible, to produce a copy of an entire document,
e.g., one so fragile and lengthy that photocopying
was impossible and alternative reproduction
impractical. I do not accept that limitation. There
may well be other situations, as, for example,
where the Court is satisfied that part of a docu
ment is irrelevant and the party has a valid reason
for not wishing to publish that part.
Quite apart from, and more basic than, the
requirement of Rule 407(2) is the question wheth
er a party can be permitted to assert his copyright
in an entire work and the infringement of that
right, while refusing to divulge the entire work.
The answer is obviously that he cannot. He must
disclose everything in which he claims copyright or
his action will be terminated summarily. There
would be no point in going to trial.
In Sitwell v. Sun Engraving Co., Ltd.,' the
English Court of Appeal, dealing with an inter
locutory order, considered a claim of copyright
infringement as a result of the publication by the
defendant, without consent, of six stanzas of the
plaintiff's unpublished poem. The poem as a whole
was, for some undisclosed reason, considered by
the plaintiff not to be entitled to copyright protec
tion. Perhaps it was obscene or defamatory. The
Master of the Rolls, at page 369, said:
I quite agree that, if the work in respect of which infringement
is complained of is the whole work in respect of which copy
right is being claimed, the plaintiff obviously could not, while
claiming copyright in fourteen stanzas, claim to seal up twelve
or two, as the case might be. But here the plaintiff is not
seeking to do any such thing. He is saying: "This is my work,
and this is what you have infringed." Whether his contention,
that he is entitled to succeed upon that basis, is right or not,
will be a matter which will have to be dealt with if and when
this question of law comes to be debated, and if and when the
relevant facts are brought before the court. At present we have
to deal only with the matter on the pleadings, and on the
plaintiff's statement of claim he is claiming breach of copyright
of a particular work, consisting of the six stanzas which have
been published. I cannot assent to the proposition that, before
he can maintain a claim of that kind, he is bound to produce
some additional stanzas, with regard to which his statement of
claim is silent, and with regard to which he makes no claim at
all.
' [1937] 4 All E.R. 366.
If the plaintiff wishes, as it presently does, to
assert copyright in the entire drawings then it will
have to produce the entire drawings. If, however, it
wishes to assert copyright in a distinct and sever-
able portion only of each drawing, I see no reason
why it ought not be permitted to so frame its
pleading and, if it does, no reason to require it to
produce any more of the drawings than those
portions. I am satisfied that there would then be
special reason, within the contemplation of Rule
407(2), not to require the plaintiff to produce the
portions of the drawings described in categories 1,
2 and 3.
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.