Federal Court denies amendments to copyright claim

In this copyright infringement action, GE Renewable Energy Canada Inc. (GEREC) sought to make further amendments to its Amended Statement of Claim. The Federal Court allowed the motion in part, emphasizing that amendments must yield a sustainable pleading.

Background

Rule 75(1) of the Federal Courts Rules provides that the Court may allow a party to amend a document, at any time, “on such terms as will protect the rights of all parties”. The general rule is that an amendment should be allowed at any stage of an action for the purpose of determining “real questions in controversy”, provided it would serve the interests of justice, and would not results in an injustice to other parties not capable of being compensated with costs. An amendment must also yield a sustainable pleading such that it discloses a reasonable cause of action and does not represent a “radical departure” from the party’s prior positions. 

GEREC sought to make further amendments to its already Amended Statement of Claim. The proposed amendments related to

• the definition of “GEREC Designs”, particularly the references to “numerous designs” and to designs being “embodied in” manufacturing drawings; and
• (ii) the definition of “Canmec’s Infringing Activities”, particularly the reference to “as well as in the refurbishment of Units 3 to 12”.

Definition of “GEREC Designs”

GEREC sought to add language that would expand the term “GEREC Designs” from covering at least 33 manufacturing drawings, to covering an unspecified number of unidentified drawings and plans. GEREC also sought to amend paragraphs 19, 20 and 27 to refer to “the 33 manufacturing drawings depicting the GEREC Designs”, suggesting that the 33 manufacturing drawings were not themselves the GEREC Designs.

GEREC argued that the presence of the words “at least” in paragraph 12 made the current definition of “GEREC Designs” an open-ended category to which more documents could be added. The Court found that in the context of paragraphs 18 to 20, the allegations in the claim related to “the 33 GEREC Designs”, rather than an an undefined, open-ended list.

More significantly, the Court found that the GEREC Designs in which copyright was claimed were the 33 manufacturing drawings. GEREC’s proposed amendments to paragraph 12 did not simply add “clarifying facts about where the GEREC Designs are embodied”. Rather, they sought to add other drawings and plans to the definition of “GEREC Designs” and the list of works that GEREC alleged to have been infringed.

While the Court did not find the proposed amendments to be a “radical departure” from GEREC’s earlier pleading, they were nonetheless found to be inadequate to meet the requirements of a sustainable pleading.

Definition of “Canmec’s Infringing Activities”

GEREC sought to make the following amendments to paragraph 28, from “preparing and submitting the Canmec Bid, as well as the refurbishment of Units 3 to 12” to “preparing and submitting the Canmec Bid as well as in relation to drawings and plans […] that Canmec prepared and/or used for the refurbishment of Units 3 to 12.”

GEREC submitted that these amendments were “simple clarifying and particularizing amendments”, which narrowed the allegation of infringement by removing the allegation that the refurbishment itself was an infringement of copyright. The Court found the proposed amendments sought to add a material new allegation regarding the conduct of Canmec said to infringe. However, they still met the threshold of a sustainable pleading.

The Court also acknowledged GEREC’s unexplained 2-year delay in this request to amend but noted that timeliness of a motion was only one relevant factor. As there was no delay to pre-trial steps or the trial, the Court found the amendments were in the interests of justice.

The Federal Court granted the motion in part and awarded costs to the respondents in the amount of $2,5000 each. GEREC was also granted leave to reapply regarding the amendments relating to the definition of “GEREC Designs”.

A copy of the decision can be found here.