Date: 20021029
Neutral citation: 2002 FCT 1120
BETWEEN:
COMPULIFE SOFTWARE INC.
Applicant
- and -
COMPUOFFICE SOFTWARE INC.
Respondent
ASSESSMENT OF COSTS - REASONS
B. PRESTON
ASSESSMENT OFFICER
[1] On May 31, 2001, the Trial Division dismissed the Applicant's applicationwith costs payable by the Applicant to be assessed on a party-and-party basis under column V of Tariff B.
[2] By way of Judgment dated December 19, 2001, on consent, the Court of Appeal varied the above-mentioned decision such that the costs the Respondent is entitled to assess shall be under column III of Tariff B and not column V. The Order of the Trial Division was otherwise unchanged.
[3] By way of letter dated June 27, 2002, counsel were informed that this assessment
appeared to be appropriate for disposition by way of written submissions. The letter further set out a timetable for the filing of submissions. Neither counsel objected to this approach and all submissions were filed within the time frame. I will therefore proceed with the assessment.
[4] In its Written Submissions, the Respondent raises the issue of complexity. As this issue affects all aspects of the assessment, I have decided to deal with it as a preliminary matter.
[5] At paragraph 3 of the Respondent's Written Representations filed July 12, 2002, the Respondent argues that, due to the complicated nature of the proceeding, the costs should be assessed at the high end of column III of Tariff B. The Respondent further submits that the complexity arises from the nature of the legal issues and evidence and from the existence of other concurrent proceedings between the same parties.
[6] In paragraph 4 of its Written Representations, the Respondent refers to three proceedings concurrent to the present matter: T-1016-95, an action for infringement commenced in Federal Court Trial Division, a proceeding before the Ontario Ministry of Consumer and Commercial Relations and a defamation action in the Ontario Superior Court of Justice.
[7] At paragraph 7 of the Applicant's Written Submissions filed July 26, 2002, the Applicant argues that the appropriate venue to deal with costs associated with the related proceedings is in each of the related proceedings.
[8] Paragraph 5 of the Respondent's Supplementary Written Submissions states:
... the scope of this proceeding was effected by the existence of related proceedings between the same parties. Specifically, the trade mark infringement proceeding, the proceeding before the Ontario Ministry of Consumer and Commercial Relations, the MULTI-LIFE trade mark opposition, and the defamation action, were identified in the Respondent's affidavit evidence, were referred to in submissions made by the Respondent's counsel at the hearing of the Application, and were the subject of the stay motion before Wetston J. Since these proceedings were in evidence in the within proceeding, they are a relevant factor when determining the complexity of this proceeding and the issue of costs....
[9] I will start by examining the Respondent's reliance on the existence of T-1016-95 to support the issue of complexity. Two things became clear from a cursory look at that file: there was a notice of status review issued on November 19, 1998 and this file was stayed on June 21, 2000 thus removing it as an issue after that date.
[10] I note that in response to said Notice of Status Review, the Respondent to this proceeding states:
...the plaintiff has clearly shown that it has no intention of proceeding with this action for some time. In fact, the plaintiff's written submissions, dated December 21, 1998, indicate that the plaintiff will not be proceeding with this action until there is a final decision in the expungement proceeding....
[11] Given this, I cannot see how the infringement proceeding would add to the complexity of the proceeding before me.
[12] Further, having regard to the proceeding before the Ontario Ministry of Consumer and Commercial Relations, paragraph 57 of the Maishlish affidavit refers to a letter from the Ministry dated May 26, 1997 stating that the proceeding is stayed pending completion of Court proceedings. Given that the proceeding before me was commenced on June 27, 1997, I can see no reason why the proceeding before the Ministry would contribute to the complexity of this matter since the above mentioned letter pre-dates the commencement of this proceeding.
[13] Having regard to the proceeding before Ontario Court (General Division), I have
reviewed the Fresh as Amended Statement of Claim attached to the Maishlish affidavit. Other than the similarity in parties, I can find no reason why that proceeding should add to the complexity of the proceeding before me.
[14] I would like to make one final observation concerning the multiplicity of proceedings. The Respondent argues that, since the related proceedings were in evidence before the Court, they are relevant in determining the issue of complexity. Having read the Reasons of the Trial Division issued May 31, 2001, I can find no reference to the related proceedings in said Reasons. The fact the Court makes no mention of these proceedings in its decision could be an indication that the Court did not find the related proceedings germane to the issue before it. Although I am not able to make a definitive finding concerning the intentions of the Court, I am of the opinion that,in the circumstances of this file, the related proceedings are not relevant to the issue of complexity, as it relates to the assessment of costs.
[15] Having regard to the nature of the legal issues and evidence, the Applicant at paragraph 5 of their submissions states:
...this proceeding was not complex. It was an application under section 57(1) of the Trade-marks Act to expunge two trade-mark registrations. There was no cross-examination on the Respondent's affidavits. The only cross-examinations in the proceeding took place three days prior to the hearing in respect of two brief affidavits, filed with leave of the court, and in total took approximately two hours....
[16] In reply, at paragraph 4 of it's Supplementary Written Submissions, the Respondent states:
...the respondent's record in this proceeding was 1,462 pages, including the factum and the book of authorities, and the applicant's record was similarly large. The parties relied on almost 40 cases. Accordingly, this was not a "typical" expungement proceeding given the volume and nature of the evidence....
[17] From my reading of the record, including the pleadings and the reasons etcetera, it does not appear that the issues were overly complex. Moreover, for the purposes of this assessment, the presence of two trade mark registrations at issue contributed to the length of the hearing, but not necessarily complexity, and will be accounted for under the appropriate item as assessed. As well, the volume of evidence relied upon, presumably because of the two trade marks at issue, did not necessarily increase complexity, but resulted in a voluminous Record, which required duplication, and will be accounted for in the associated disbursements as assessed.
[18] I would like to make a final comment concerning complexity. In the final sentence of paragraph 4 in their written representations, the Respondent argues that the Trial Court, in ordering costs to be taxed under column V of Tariff B, realized the complexity of the Application. In response to this, the Applicant states that, in light of the judgement of the Court of Appeal, granted on consent, the original decision of the Trial Court to award Costs under column V is irrelevant. In reply to this argument, the respondent states:
the decision of Mr. Justice Muldoon to award costs under Column V of Tariff B is relevant and should be considered on this assessment. Justice Muldoon correctly recognized that the Applicant's attack on the entitlement, registrability and distinctiveness of the COMPUOFFICE and ACROSS THE BOARD registrationswas without merit, and dismissed each attack. The Applicant's complete lack of success was (i) reflected in the costs order of Justice Muldoon, and (ii) is not altered in any way by the consent dismissal of the appeal.
[19] Even if counsel for the Respondent is correct, that the costs Order of the Trial Division reflected the complete lack of success by the Applicant, I am of the opinion that the Applicant's lack of success is not an indication of the complexity of the issue before the Court. Moreover, I am in agreement with counsel for the Applicant that, in light of the Judgment in Court of Appeal, the original decision of the Trial Court, to award costs under column V, is not relevant to this assessment.
[20] It is for the preceding reasons that I find no reason to consistently utilize the high end of Column III of Tariff B. I will now address the issue of costs on an item by item basis.
[21] Having regard to the preparation and filing of a Reply, the Respondent is claiming 6 units under item 2 in their Bill of Costs. The Applicant on the other hand argues that 4 units would be appropriate. I am of the opinion that 5 units would be reasonable in the circumstances of this file, such as the nature of the three affidavits filed in support of the Reply. I find no problem with the associated disbursements claimed by the Respondent and allow $7.00 for photocopying.
[22] Having regard to the Respondent's motion dated August 20, 1997, I am of the opinion that no costs should be allowed for this hearing. In its written representations filed July 12, 2002, the Respondent correctly states that the Court ordered that costs of the motion were to be considered by the judge hearing the application for expungement. In response, the Applicant, at paragraph 11 of its Written Representations, states:
...The Honourable Mr. Justice Muldoon does not in either his Order or his Reasons for Order, both dated May 31, 2001, consider or make an order with respect to the costs for the aforementioned motion. Accordingly, there is no order awarding the Respondent costs of the aforementioned motion (which motion was dismissed) and accordingly, the Respondent is not entitled to any such costs....
[23] In its Supplementary Written Submissions the Respondent states:
...Justice Wetston ordered that the costs "should be considered by the judge hearing the application for expungement." The costs of the Application were considered by Justice Muldoon who held, in the Reasons for Order, that "Costs are assessed employing Column V of Tariff B". Since Justice Wetston did not make a costs order, it was open for Justice Muldoon to do so, which he did by allowing the Respondent to tax all its costs under Column V....
[24] The Respondent continues by stating:
... the Applicant appears to be arguing that because Justice Muldoon did not specifically refer to the stay motion, no costs were awarded for that motion. While the Respondent respectfully disagrees for the reasons stated above, the Respondent submits that even if the Applicant is correct, "special circumstances" justify an award of costs for this motion....(Emphasis added)
[25] The Respondent continues by listing three reasons which justify an award of costs for the motion to stay the proceeding. I am of the opinion that I do not have to consider these reasons. Pursuant to Rule 400 (1), the Court has full discretionary power over the amount and allocation of costs and the determination of by whom they are to be paid. In other words, it is the Court that awards costs. Therefore, as I do not exercise Rule 400 (1) jurisdiction of the Court and there was no motion for directions pursuant to Rule 403, the special circumstances enumerated by the Respondent are not relevant to this assessment.
[26] In summary, given that the Respondent agrees that the Honourable Mr. Justice Wetston did not make an order as to costs for this motion to be assessed, the Court would have to have specifically made such an award in its final decision. I am in agreement with counsel for the Applicant that the Court made no such order in its decision of May 31, 2001. For the preceding reasons, and as stated earlier, no costs will be awarded for the motion to stay the proceeding.
[27] I will now turn to the preparation and filing of the Respondent's Record. The Respondent has requested 6 units under item 2. The Applicant argues that 4 units would be appropriate. Having regard to the fact that the Respondent filed 3 affidavits in support of its Reply, which in turn contributed to the number of factual issues addressed in the Respondent's Factum, I will award 5 units. With respect to the related disbursements for photocopying, I find these reasonable with two caveats. Firstly, the Respondent prepared six copies. As Rule 310 of the Federal Court Rules, 1998 requires the Respondent to file 3 copies, two more copies were required: one copy for Respondent's counsel and one copy for Applicant's counsel. As for the last copy, for the client, the decision in Okeyan v. Canada [1989] 1 F.C. D-9 states that copies of pleadings for the information of clients do not form part of party and party costs. I will therefore allow for 5 copies of the Respondent record.
[28] Secondly, having regard to the quantity of copies claimed by the Respondent, the Applicant contends that the record contained only 1,303 pages. This does not account for the fact that the Authorities were double sided copies for a total of 1,486 pages. Rule 65(a) makes provision for double sided copies in books of authorities. I am of the opinion that since a photocopier counts double sided copies as two copies, I should also. Finally, at paragraph 6 of the Affidavit of Mary Mutchler, photocopy charges were calculated at 25 cents a page. Given the decision in Moloney v. Canada 24 F.T.R. 283 (T.D.), this is clearly acceptable absent evidence of a more elevated rate. The Respondent claimed disbursements of $2,166. 55 for photocopying of the Record. For the reasons stated above, I will allow $1,857.50. I have no concerns about the courier charges and will allow them as requested at $15.25.
[29] Concerning the Respondents motion dated November 15, 2000, for leave to file the Affidavit of Mary Mutchler, I allow 4 units under item 5, for preparation and filing. This was not a complex motion and lasted only 15 minutes by teleconference.
[30] Having regard to the attendance of counsel at said teleconference, the Respondent contends that it should be allowed 1 unit under item 6. The Applicant made no submission concerning this motion. I therefore allow the minimum of one unit for this motion. Concerning the associated disbursements, the Respondent has requested $57.00 for photocopies and argues the photocopies were for the five copies of the Motion Record. The Motion Record contained 25 pages for a total of 125 copies. This being the situation, I allow $31.25 for photocopying and $9.61, as requested, for courier charges.
[31] Having regard to the cross-examination of James Daw on behalf of the Respondent, his affidavit contained 2 paragraphs and 1 exhibit and was not at all complex. It dealt with a typographical error in a newspaper article. I therefore allow 2 units for preparation and 1 unit per hour for attendance under items 8 and 9 respectively.
[32] Having regard to the cross-examination of Robert Barney on behalf of the Applicant, his affidavit was slightly longer with five exhibits. I am allowing 3 units under item 8, for preparation, to account for the fact that the affidavit was slightly longer than the affidavit of Mr. Daw and the fact that, because the affidavit was prepared by the Applicant, counsel was required to fully inform himself concerning its contents in preparation for the cross-examination. I allow 1 unit per hour, under item 9, for attendance at the cross-examination.
[33] Concerning the Court reporter fee paid to Atchison & Denman for the transcript of cross-examination of Robert Barney, and given that said cross-examination was pursuant to an Order of the Court dated November 24, 2000, I find this to be a reasonable and necessary expense and allow this disbursement as requested at $367.20. Counsel for the Applicant makes no issue concerning facsimile transmissions and neither do I. I will allow this disbursement as claimed at $13.00.
[34] Concerning disbursements for the photocopying of the transcripts of the cross-examination, the Respondent at paragraphs 16 and 18 of its Supplementary Written Submissions and paragraph 6 and 7 to the affidavit of Mary Mutchler states that the photocopying included a copy of the transcript for the client. Further to my earlier finding concerning a client copy of its Application Record, I will not allow for the client copy of the transcript. I therefore allow $20.00 for the photocopies concerning the cross-examination of Mr. Daw and $22.50 for photocopies concerning the cross-examination of Mr. Barney.
[35] Having regard to preparation for hearing, given the fact that this was an application with no witnesses and my finding concerning complexity, I allow 3 units under item 13. I find the disbursements for photocopying reasonable given that the Respondent would have to produce 3 copies of any additional cases (Respondent's counsel, Applicant's counsel and the Court) and allow this disbursement as claimed at $98.25.
[36] Regarding the Quicklaw charges, given the dates of the searches, it appears that they relate to the hearing and, given that approximately one-half of the expense was incurred searching six cases, I find the expenses as claimed reasonable and justifiable at $598.10.
[37] The Respondent has claimed 3 units, under item 14, for attendance at the hearing of the expungement proceeding. Given my finding concerning complexity, I will allow 2 units per hour for attendance at the hearing.
[38] The Respondent has claimed 5 units under item 26 for the assessment of costs. The Applicant did not take exception to this. Therefore, in the circumstances of this assessment, 5 units will be allowed. Disbursements for the assessment are allowed as requested at $100.00.
[39] In its Bill of Costs, the Respondent requested total costs of $12,652.52, plus interest. In view of the foregoing and for the reasons stated, total fees, disbursements and GST are allowed at $9,149.06 plus interest.
[40] Neither party made submissions as to the method to be used for the calculation of interest, therefore, pursuant to Section 37 (1) of the Federal Court Act, and sections 127 (1) and 129 (1) of the Courts of Justice Act, interest on the assessed amount shall run at 7% from May 31, 2001, to the date of collection.
"Bruce Preston"
Bruce Preston
Assessment Officer
Toronto, Ontario
October 29, 2002
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1398-97
STYLE OF CAUSE: COMPULIFE SOFTWARE INC.
Applicant
- and -
COMPUOFFICE SOFTWARE INC.
Respondent
ASSESSMENT WITHOUT PERSONAL APPEARANCE OF PARTIES
ASSESSMENT OF COSTS -
REASONS BY: BRUCE PRESTON
DATED: TUESDAY, OCTOBER 29, 2002
SOLICITORS OF RECORD: Osler, Hoskin & Harcourt
For the Applicant
Bereskin & Parr
For the Respondent
FEDERAL COURT OF CANADA
Date: 20021029
Docket:T-1398-97
BETWEEN:
COMPULIFE SOFTWARE INC.
Applicant
- and -
COMPUOFFICE SOFTWARE INC.
Respondent
ASSESSMENT OF COSTS - REASONS