Date: 20050525
Docket: T-1459-97
Citation: 2005 FC 745
Ottawa, Ontario, May 25, 2005
Present: The Honourable Madam Justice Danièle Tremblay-Lamer
BETWEEN:
ITV TECHNOLOGIES, INC.
Plaintiff
AND
WIC TELEVISION LTD.
Defendant
AND:
WIC TV AMALCO INC. and
GLOBAL COMMUNICATIONS LIMITED
Plaintiffs by Counterclaim
AND
ITV TECHNOLOGIES, INC.
Defendant by Counterclaim
REASONS FOR ORDER AND ORDER
[1] In the Order dated September 10, 2003, the claim for expungement made by the plaintiff, defendant by counterclaim, ITV Technologies Inc. (ITV), was dismissed with costs. The counterclaim for passing off, trademark infringement and depreciation of goodwill attached to registered trademarks made by the defendant, plaintiff by counterclaim, WIC Television Ltd./Global Communications Limited (WIC), was also dismissed with costs.
[2] WIC is requesting an order directing the assessment officer that WIC be permitted to recover the following costs:
(a) counsel fees for second counsel pursuant to Tariff B Table item 14(b);
(b) counsel fees for the preparation and filing of written arguments at trial pursuant to Tariff B Table item 15;
(c) travel by counsel to attend examinations for discovery and trial pursuant to Tariff B Table item 24;
(d) the professional consulting fees paid to the witness Wallace Kirk; and
(e) all costs of the dismissed claim assessed pursuant to column IV of the Tariff B Table.
ANALYSIS
Second Counsel
[3] WIC submits that its expenses were reasonable under all circumstances and assisted in the efficient and just resolution of ITV's claim and that it is fair and equitable that it recover said costs. It also submits that this action involved novel issues of practice, evidence and law having an importance beyond the parties' interests.
[4] WIC submits that in 2002, ITV's counsel retained co-counsel. Mr. Lunny appeared with Mr. Gornall at a case management conference and at an examination for discovery in February 2003. WIC therefore asked Mr. Fraser to assist on the case. WIC submits that it was led to expect that Mr. Lunny would also appear for ITV at trial. By then, Mr. Edmonds had already divided up the trial responsibilities with Mr. Fraser.
[5] Nevertheless, in my view, WIC should not be entitled to costs for second counsel. It is clear from WIC's submissions and Mr. Edmond's affidavit that Mr. Fraser was asked to act as second counsel only once he met Mr. Lunny. WIC's submissions pertaining to the necessity of second counsel relate solely to the appearance of Mr. Lunny at the examination and case management conference. Thus, had Mr. Edmonds known that Mr. Gornall would present at trial alone, it appears that he would have handled the trial alone as well.
[6] Thus, notwithstanding that Mr. Edmonds and Mr. Fraser divided the tasks between them, it seems that Mr. Fraser was retained not because he was needed in order for WIC to present and defend its case, but because ITV had seemingly retained second counsel. Had WIC informed ITV prior to the first day of trial that it had retained second counsel, it may have learned that ITV had not; these costs could have been avoided.
Preparation and Filing of Written Arguments
[7] Since both parties submitted written arguments, and they were useful to this Court in coming to a decision, I will grant both parties costs for written arguments.
Travel Costs
[8] I do not accept ITV's submission that WIC should have chosen counsel in Vancouver. ITV asked that the trial take place in Vancouver, knowing WIC's counsel worked from Toronto. WIC is free to choose counsel, and to expect it to change counsel at that point in the proceedings because of the location of the trial is unreasonable. ITV should have known its request would result in travel costs for WIC's counsel.
[9] I will award costs for counsel's travelling expenses to the examinations and the trial.
Mr. Kirk's Witness Fee
[10] Mr. Kirk was not an expert witness. WIC was obliged to have a representative for examination for discovery and it chose Mr. Kirk as its factual witness though he no longer worked for WIC. However, I recognize that Mr. Kirk gave up his own professional earnings in order to attend the trial and should be compensated in part. Therefore, I will grant half of Mr. Kirk's witness fee.
High End of Column IV
[11] For the reasons given in ITV's motion for costs, I am of the opinion that I have the discretion to increase the column under which costs are to be assessed. Costs to both WIC and ITV addressed by this motion should therefore be assessed pursuant to the high end of column IV of Tariff B.
[12] Costs of this motion.
ORDER
THIS COURT ORDERS that
(a) Costs to both WIC and ITV for counsel fees for the preparation and filing of written arguments at trial pursuant to Tariff B table item 15;
(b) Costs to WIC for travel by counsel to attend examinations for discovery and trial pursuant to Tariff B table item 24;
(c) Half of the costs to WIC for the professional consulting fees paid to the witness Mr. Wallace Kirk;
(d) Costs of this motion to WIC; and,
(e) All costs to be assessed pursuant to column IV of the Tariff B table.
"Danièle Tremblay-Lamer"
F.C.J.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1459-97
STYLE OF CAUSE: ITV Technologies, Inc.
and
WIC Television Ltd.
PLACE OF HEARING: Vancouver, British Columbia
DATE OF HEARING: May 3, 2005
REASONS FOR ORDER
AND ORDER OF Tremblay-Lamer J.
APPEARANCES:
Mr. Paul Gornall FOR PLAINTIFF
Mr. Brian Edmonds
Mr. Barry Fraser FOR DEFENDANT
SOLICITORS OF RECORD:
Lawyer - Reg'd Patent & TM Agent
1820-355 Burrard Street
Vancouver, British Columbia
V6C 2G8 FOR PLAINTIFF
McCarthy Tétrault
Toronto, Ontario and
Vancouver, British Columbia FOR DEFENDANT