ONTARIO

SUPERIOR COURT OF JUSTICE

COURT FILE NO.: 09-46989
DATE: 2012/09/14

BETWEEN:

HER MAJESTY THE QUEEN Plaintiff – and – MADELEINE RUNDLE c.o.b. NEC PLUS ULTRA Defendant

Alexandre Kaufman, for the Plaintiff
Kristopher Dixon, for the Defendant

HEARD: July 18, 2012

REASONS FOR DECISION

R. SMith j.

[ 1 ] The Attorney General of Canada (“AG”) seeks an injunction preventing the respondent Madeleine Rundle, carrying on business as Nec Plus Ultra (“Rundle”), from continuing to use copies of the Public Service Commission’s (“PSC”) Second Language (French) Evaluation Tests (“SLE”) to prepare her students for the SLE test.

[ 2 ] The AG submits that it has raised a serious issue, that it would suffer irrevocable harm if a copy of the official SLE tests continue to be used by Rundle to prepare her students to write the SLE test, that it is blatantly unfair for any group to have a copy of the SLE test in advance of writing the test, and the balance of convenience favours granting an injunction.

[ 3 ] Rundle acknowledged that she used the documents, Expression écrite, Revue de l’écrit 1 et 2 as part of her practice materials for her students, but submits that they were developed by speaking with her former students about the questions on the SLE test. Rundle further submitted that the SLE tests were a poor measure of a student’s French language skills, that there was no urgency as the court proceeding has been ongoing since 2009, that PSC has failed to take the required steps to ensure that the content of the SLE tests remained confidential, and that she is only one of many private schools providing French language training and therefore the PSC would not suffer irreparable harm if she continued to use a copy of the SLE test to prepare her students. Finally she submits that the balance of convenience favours allowing her to continue to use copies of the SLE test to ensure the continued financial success of her business.

[ 4 ] The Second Language Evaluation tests for the French Language were developed by the PSC at a substantial cost to the tax payers, they were intended to be kept confidential, and are stamped that they are subject to copyright protection. The SLE tests are used to obtain employment for bilingual positions with the Federal Government.

[ 5 ] I agree with the AG’s submission that disclosing the contents of the SLE test to prospective job candidates before writing the SLE test undermines PSC’s mandate of ensuring that appointments to the Public Service are based on merit, undermines the Official Languages Act ’s objective of recognizing the equal status of French and English, undermines the public’s right to be served by federal institutions in the official language of their choice, and is very unfair to individuals who take the SLE tests honestly, without having prior access to a copy of the questions on the SLE test.

The Test Materials

[ 6 ] The AG has presented strong evidence from three former students of Rundle’s program. They provided copies of the materials they were given by Rundle to prepare for the SLE test. Ms. Rundle acknowledged that pages 1‑52 of the materials titled “Expression écrite” and “Revue de l’écrit 2” were given to her students and used as practice materials. She also acknowledged that the practice materials brought forward by Major DeBruin including “Expression écrite”, “Revue de l’écrit” and “Revue de l’écrit 2” were her practice materials that she gave to her students.

[ 7 ] The PSC administers the Reading Comprehension Test and the Test of Written Expression approximately 20,000 times per year to candidates applying to bilingual positions throughout the Federal Public Service.

[ 8 ] The PSC has stamped the cover and each page of the SLE tests as “Protected B”. The Treasury Board security policy describes “Protected B” as protected information that “compromise could result in grave injury, such as loss of reputation or competitive advantage”.

[ 9 ] The PSC has taken steps to ensure that the SLE tests remain confidential, including stamping each test and page with “Protected B”, it advises administrators of the tests to protect the tests and that test security is important. The instruction manual for test takers advises them not to share the content with anyone.

[ 10 ] The PSC claims copyright in the SLE tests created by it. The tests are all stamped copyright protected. The defendant concedes that the PSC has copyright protection in the SLE test.

[ 11 ] Section 12 of the Copyright Act , R.S.C., 1985, c. C‑42, provides that where a work has been prepared by the Crown the copyright belongs to Her Majesty.

[ 12 ] In CCH Canadian Ltd. v. Law Society of Upper Canada , 2004 SCC 13 , [2004] 1 S.C.R. 339 at para. 16 , the Supreme Court stated that “[w] hat is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment.”

[ 13 ] The PSC prepared an audit of the test results of students taking the SLE (French) tests. The students of Nec Plus Ultra were found to have achieved success rates that far exceeded those of the average population taking these tests.

[ 14 ] When PSC compared the practice tests Ms. Baird, Captain Norton and Major DeBruin received from the defendant with the official SLE tests, F632 B1 and F653 B2, it found that the defendant’s practice materials contained test content found in 59 out of 60 questions (98.3 per cent of the questions on the official PSC SLE test F632 B1) and 58 out of 65 (89.2 per cent) of the questions on the official PSC SLE test F653 B2). For Ms. Baird, the test content found 37 out of 60 questions (61.6 per cent) were the same.

Test

[ 15 ] The test to be met to grant an injunction was set out in RJR–MacDonald Inc. v. Canada (Attorney General) , 1994 , [1994] 1 S.C.R. 311 at para. 43 as follows:

First, a preliminary assessment must be made of the merits of the case to ensure that there is a serious question to be tried. Secondly, it must be determined whether the applicant would suffer irreparable harm if the application were refused. Finally, an assessment must be made as to which of the parties would suffer greater harm from the granting or refusal of the remedy pending a decision on the merits.

Serious Issue to be Tried

[ 16 ] The threshold on the first part of the test is a low threshold and the court should not extensively review the merits of the case, but must be satisfied that the issues raised are not frivolous or vexatious.

[ 17 ] I am satisfied that the AG has satisfied the first part of the test for the following reasons:

(a) the Crown retains copyright of any work prepared or published under its direction or contract;

(b) the SLE tests are stamped “Crown Copyrights Reserved”;

(c) where copyright is in issue, the existence of copyright is presumed unless the contrary is proven pursuant to s. 34.1(1) (a) of the Copyright Act , supra ;

(d) the defendant admitted that the Crown retained copyright in the SLE French Language tests prepared by the PSC;

(e) I am satisfied that the authors of the SLE French Language tests exercised considerable skill and judgment when producing the tests to assess the candidates’ second language abilities;

(f) in University of London Press v. University Tutorial Press , [1916] 2 Ch. 601 at 608 (described by the Ontario Court of Appeal in as a “leading authority in Delrina Corp. (c.o.b. Carolian Systems) v. Triolet Systems Inc. , (2002) 2002 , 58 O.R. (3d) 339 (C.A.) at para. 39 ) the Court held that mathematics examination papers developed for the University of London were “literary works” within the meaning of the Copyright Act ;

(g) a similar conclusion was reached in Educational Testing Services v. Katzman , 793 F.2d 533 ; 1986 U.S. App. at p. 8, by the United States Court of Appeal for the Third Circuit, which held that questions developed for the Scholastic Aptitude Test (“SAT”) were “original works of authorship” and entitled to copyright protection.

(h) there is a strong case that the defendant’s practice tests were copied from the original SLE tests, as a comparison shows that 98 per cent of the test content in test F632 B1 and 89 per cent of test contain F653 B2 was found, in some form, in the defendant’s practice materials.

Irreparable Harm

[ 18 ] In RJR-MacDonald, supra , at para. 59, the Supreme Court stated that irreparable harm “refers to the nature of the harm suffered rather than its magnitude. It is harm which either cannot be quantified in monetary terms or which cannot be cured, …”

[ 19 ] A public authority such as the PSC has a lesser onus of demonstrating irreparable harm than a private litigant and will almost always be met “… upon proof that the authority is charged with the duty of promoting or protecting the public interest …” ( RJR-MacDonald, supra , at para. 71)

[ 20 ] The PSC administers approximately 20,000 SLE tests each year to employees of the Federal Public Service seeking promotions or career advancement. The Constitution provides that English and French are the official languages of Canada and have equal status rights and privileges as to their use in all institutions of Parliament and the Government of Canada.

[ 21 ] If persons are able to use materials that are substantially the same as an official SLE test in preparation for the test, then I find that these individuals would have an unfair advantage compared to other test takers. The SLE tests would be rendered meaningless if some students, namely students of the defendant have access to the official SLE test questions or a very high percentage of the test questions (98 per cent and 89 per cent) to enable them to prepare for the test.

[ 22 ] Prior access to the test questions invalidates the test and would cause the PSC irreparable harm by preventing the PSC from fulfilling its mandate to ensure compliance with the Official Languages Act , which provides that every federal institution must ensure that members of the public can communicate and obtain available services, in either official language where there is significant demand.

[ 23 ] The defendant submits that her business will suffer irreparable harm if she is not allowed to continue to use a copy of the official SLE tests to prepare her students. I do not agree and find that she should not be permitted to copy and use the Crown’s copyrighted SLE test materials for her own financial benefit. Allowing her to use a copy of the SLE test questions invalidates the test results and gives her students a very unfair advantage. I find that preventing the defendant from continuing to make unauthorized use of the copyright protected SLE tests would not cause irreparable harm to the defendant because she never had permission to use a copy of the SLE tests from the PSC in the first place.

[ 24 ] The defendant further argues that the PSC did not take sufficient care to ensure the SLE tests remained confidential. The AG has taken a number of steps to ensure that the content of the SLE tests remained confidential. Whether additional measures could or should have been taken does not mean that the PSC would not suffer irreparable harm if the defendant was permitted to continue to use a copy of the official SLE French Language tests to prepare her students for that test.

[ 25 ] The defendant has provided no evidence that any other French Language training school has obtained a copy of the French SLE tests. The PSC’s analysis of the test results of students from all French language schools show an abnormally high success rate by students graduating from the defendant’s program. While all students from the other French language schools continue to achieve success rates similar to previous years, students graduating from the defendant’s program have rates of success which are ten times better than students from other French language schools. In addition, the defendant’s students achieved 44 to 46 times the number of perfect scores when compared with all students taking the SLE test.

[ 26 ] The defendant also submits that the AG has waited too long to seek injunctive relief as this action was commenced in 2009. Mr. McSheffrey’s affidavit states that the PSC was not aware that the defendant had obtained a copy of the new French SLE tests until May or June 2012. The AG issued a notice of motion on June 28, 2012 seeking injunctive relief which does not constitute an undue delay or evidence that the PSC would not suffer irreparable harm in the injunction was not granted.

[ 27 ] The defendant also argued that the SLE French Language tests developed and used by the PSC did not accurately test fluency in the French language. I am not in a position to make any finding on the quality or effectiveness of the SLE tests used by the PSC. Even if the defendant is correct and it would be possible to develop better tests, this does not permit the defendant to use a copy of the current official SLE test to prepare her students for that test and it does not mean that the PSC would not suffer irreparable harm if the defendant is allowed to use a copy of the official SLE tests to prepare her students for that very test.

[ 28 ] In Attorney General of Canada v. Gill , 2001 FCT 814 , at para. 7 , the Federal Court held that:

If the Commission cannot assure an appeal board that a test has not been compromised by retaining control of that test, it cannot use that test as an assessment tool and must replace it at great cost. Confidentiality of test materials is therefore an important aspect of the merit principle.

[ 29 ] I am satisfied that the harm to the PSC by allowing the defendant to continue to use a copy of the SLE test questions as practice materials for her students causes irreparable harm which prevents the PSC from exercising its public duties, and that cannot be quantified in monetary terms. I am also satisfied that the PSC and its whole SLE French Language testing program would suffer irreparable harm if the defendant is allowed to continue to use a copy of the SLE official test to prepare her students for that test. For the above reasons, I conclude that the second branch of the test has been met.

Balance of Convenience

[ 30 ] I find that the balance of convenience favours allowing the defendant to continue to operate her teaching business but without using a copy of the official SLE test questions or questions that are substantially similar as practice materials for her students. If the defendant was to continue to use a copy of the official SLE tests as practice materials, then the PSC would be required to recreate the tests at great public expense and the integrity of public service staffing and the Government’s official language obligations would be compromised causing the PSC irreparable harm and a large inconvenience.

[ 31 ] In Association of American Medical Colleges v. Viken Mikaelian , 571 F. Supp. 144; 1983 U.S. Dist., the developers of the Medical College Admission Test (“MCAT”) obtained an injunction against Multiprep, a test preparation business. The Court found that the balance of convenience weighed overwhelmingly in favour of granting the injunction and held that the defendants could continue to operate its business so long as it did not employ copyrighted test questions.

[ 32 ] I agree with the AG’s submission that the defendant would be minimally affected if the injunction was granted because she can choose from a variety of French language training practice materials or create her own materials to prepare her students.

[ 33 ] I also find that the balance of convenience overwhelmingly favours granting an injunction to prevent the defendant from using a copy of the official SLE test questions, or substantially similar questions, to prepare her students write the French SLE test.

Disposition on Motion for an Injunction

[ 34 ] The injunction is granted enjoining the defendant Madeleine Rundle c.o.b. Nec Plus Ultra or any employee of Nec Plus Ultra from copying, reproducing, distributing, making available to the public or any clients of Nec Plus Ultra/or offering for sale, in any manner with questions that are substantially similar to the PSC’s Second Language Evaluation Tests F632 B1 and F653 B2 until the trial or other disposition of this action or further order of the Court.

Costs

[ 35 ] The defendant and plaintiff submitted costs outlines following the hearing. The defendant sought partial indemnity costs in the amount of $8,353.75, inclusive of HST and disbursements. The moving party sought partial indemnity costs of $9,424.50.

[ 36 ] The AG was successful and obtained the injunction sought and is therefore presumptively entitled to partial indemnity costs. The partial indemnity hourly rate of $120.00 per hour claimed by the AG is very reasonable for counsel who was called to the Bar in 2003 (nine years experience)

[ 37 ] The defendant spent approximately 70 hours in preparation and the AG spent 77.5 hours in preparation. Both parties spent similar amounts of time in preparation.

[ 38 ] The amount sought in costs by the defendant responding party is approximately $1,000.00 less than the amount claimed by the AG, but their costs outline establishes that the reasonable expectation of the unsuccessful party would be in the range of $8,353.00.

[ 39 ] The matter was important to the parties but particularly important to the AG as the integrity of the SLE tests were in jeopardy if the injunction was not granted.

[ 40 ] The matter was of average complexity for a claim for injunctive relief.

[ 41 ] Considering the above factors, I order the defendant to pay costs on a partial indemnity basis fixed in the amount of $6,500.00 plus disbursements of $972.75 for a total of $7,472.75.

R. Smith J.

Released: September 14, 2012