Date: 20000615
Docket: T-577-87
BETWEEN:
THE LUBRIZOL CORPORATION
AND LUBRIZOL CANADA LIMITED
Plaintiffs
- and -
IMPERIAL OIL LIMITED
AND ITS SUBDIVISION PARAMINS
Defendants
REASONS FOR ORDER
(delivered orally from the bench in Toronto, Ontario,
on Tuesday, June 13, 2000)
HUGESSEN J.
[1] I am going to dismiss this motion without calling on the respondents except on the question of costs as to which I shall invite submissions shortly.
[2] In my view, this is a motion that should not have been brought. The defendant moves to oblige the plaintiffs to name a second representative for the purposes of examination for discovery. A representative has already been named by the plaintiffs, both of them, a Dr. Schroeck, and he has been examined for what I believe is a total of 17 days already. We are told now that the defendants take the position that Dr. Schroeck is not a proper and informed witness. That position must be modified somewhat by the obvious fact that the defendant has managed to examine Dr. Schroeck for that great length of time and Dr. Schroeck has proved indeed to be a very proper and informed witness on one aspect of this case, the technical aspect. It is, of course, a complex case. One cannot expect that any one witness will be fully informed on every aspect of the case, but clearly, Dr. Schroeck is informed on at least one aspect of it.
[3] It is said that Dr. Schroeck is not a proper representative of the plaintiff Lubrizol Canada Limited. He is not an employee of Lubrizol Canada Limited; he has always been an employee of Lubrizol Corporation, the American parent of Lubrizol Canada Limited, which is a wholly owned subsidiary of the Lubrizol Corporation.
[4] It has been shown, and there is no doubt, that Dr. Schroeck has no particular knowledge of the operations of Lubrizol Canada Limited in Canada. And a number of questions were put to him, which were, in my view, irrelevant, in any event, as to his knowledge of the number of employees and the number of sales offices that Lubrizol Canada Limited might have in Canada, which he could not answer.
[5] The fact that he was unable to answer those questions does not, in my view, demonstrate that he is an improper person to appear on behalf of Lubrizol Canada Limited and to answer questions on its behalf. If he was asked, and I do not know, to give undertakings with respect to certain relevant questions, clearly, he is in a position to obtain the information and to furnish it.
[6] It is said that he has no knowledge whatever of the Canadian marketing practices of Lubrizol Canada Limited, of that company"s sales, profits and costs. I have some considerable difficulty knowing how questions bearing on those matters can be relevant to the present inquiry which is a reference after judgment to determine the amount of profit which the defendant Imperial Oil will be obliged to disgorge as a result of its now established infringement and its now established contempt of this Court"s injunction. The profits which it must disgorge are those profits which it, Imperial, has made on the sale of products containing an infringing component which is the subject of Lubrizol"s patent. The issue to which the questions which it is sought to put to a Lubrizol Canada representative are said to be relevant is the issue of apportionment, namely Imperial Oil"s right to show, if it can, that some part of its profits from the infringing and contemptuous sales was not due in whole or in part to the fact that those sales were of an infringing or contemptuous product. That is a difficult burden and high hill for Imperial Oil to climb and I concede that it is entitled to make use of every procedural arm which it can bring to hand in that endeavour. However, I have great difficulty understanding how whatever the Canadian plaintiff may have done in the Canadian market is going to be relevant to that.
[7] Be that as it may, if questions can be asked which are relevant, they can be asked and Dr. Schroeck is clearly in a position to obtain answers to them and to give undertakings to give answers to them if that is found to be appropriate. The simple fact that we are dealing with a many issued case does not create a right in the defendant to conduct many examinations of many representatives of the plaintiffs.
[8] It is said, as an additional argument that Dr. Schroeck is not an "acceptable" witness. The word acceptable comes from the terms of the final judgment that was given in this matter by Mr. Justice Cullen, some ten years ago. Acceptability is not a matter of whim. If that judgment provides as it does that the representative put up by the plaintiffs must be acceptable to the defendant, the non-acceptance of a witness must still be rational to be justified. Here, manifestly, Dr. Schroeck cannot be said to be unacceptable since he has been examined on an important issue in this case for a great many days. What is more, if the defendant seeks to take comfort from the wording of Mr. Justice Cullen"s order, it must take the bad with the good, and that order makes it equally clear that only one representative of the two plaintiffs is to be put up by them. And indeed that is what this motion, in my view, comes down to. The defendant is seeking to conduct a second examination on discovery of a second witness because it is not happy with what it has got from the first witness. I can see no basis for granting it that right and I am going to dismiss the motion.
[9] I invite submissions on costs.
LATER
[10] Having heard counsel, I am quite satisfied that the sum suggested by Mr. MacOdrum, namely $7,500 plus allowable disbursements payable forthwith and in any event of the cause is an appropriate order as to costs.
"James K. Hugessen"
Judge
Ottawa, Ontario
June 15, 2000