CANADIAN PATENT REPORTER Delrina Corp. carrying on business as Carolian Systems v. Triolet Systems Inc. et al. [Indexed as: Delrina Corp. v, Triolet Systems Ine.] Court File No, 12515/86 Ontario Court (General Division), O'Leary J. February 12, 1993. Copyright — Subject-matter — Literary works — Computer programs— Subsistence of right — Copyright in set of instructions — Non-literal portion of program subject-matter for copyright — Performance monitoring tool for Hewlett-Packard computer HP3000— Object code as machine readable form of program — Plaintiff's program known as “Sysview” — Defendant's program known as “Assess” — Both programs designed to work on HP3000 computer — Some performance monitoring tools in public domain — Policy of U.S. Copyright Office as to screen displays — Both literal and non-literal portions of plaintiffs’ program protectable under Canadian Copyright Act, R.S.C. 1985, c. C-42 — Functional elements of idea not subject-matter for copyright — Lines common to HP3000 computers not protectable — Sub- stantial portion of plaintiffs’ Sysview interface not subject-matter for copy- right — Some portions of source code copyrightable — Wording of licence agreement that of solicitor not of employee of plaintiff. Copyright — Infringement — Copying —Program of performance moni- toring tool designed to assist user to use HP3000 computer more efficiently — Source code for performance monitoring tool — Plaintiff's and defendant’s programs having same purpose or function — Failure to estab- lish defendants’ source code “Assess” copy of plaintiff's source code “ysview” — Right to use of skills in competition with former employer — Time taken in writing code of defendant— Similarities between source codes of parties — Employee author of both codes — Intrinsic evidence of copying — “Bugs” in both systems — Assess supporting same terminals as Sysview — Same hidden command in both systems — Copying of some lines being de minimis — Infringement not established — Infringement by copy- ing particular screen display produced from stored instructions — Abstrac- tion, filtration and comparison as to steps to establish substantial similarity of works — Look and feel to establish protectable expression — Removal of material from program not protectable subject-matter for copyright — Functional subject-matter — Copying material in public domain not infringe- ment. 1—47 CPR. (34)2 CANADIAN PATENT REPORTER 47 C.P.R. (3d) ‘rade secrets and confidential information — Computer program — Per- formance monitoring tool for Hewlett-Packard HP3000 computer — Source code — Retention of customer lists — Lists not misused — Materials retained of little use to former employee — Materials taken destroyed by former employee — Pricing policy not trade secret— Function of source code not trade secret— Right of employee to compete — Employee entitled to use own skills — Employee free to create source code “Assess” without copying source code of plaintiff — Defendant not taking trade secret of plaintiff. Employment — Fiduciary duty — Computer programmer — Programmer designing source code for performance marketing tool (Sysview) for Hewlett-Packard computer (HP3000)—Programme~ designing tool for same computer having same function after leaving plaintiff (Assess) — Programmer not officer or director of former employer — Retention of customer lists — Lists not misused — Relationship with customers — For- mer employee not becoming aware of any special business opportunity while employed — Right of employee to compete — Employee entitled to use own skills and memory — Defendant not in breach of fiduciary duty. Contempt of court— Grounds — Interlocutory injunction obtained by plaintiff — Action dismissed at trial — Fai tion of earlier order —Interlocutory injunction granted because of similari- ties of programs of parties — Similarities not resulting in infringement at trial— Programs for performance monitoring tool for HP3000 computer — Liability of plaintiff on undertaking — Trial of issue to establish damages on restraint from marketing program — Contempt not established. The individual defendant, Duncombe, while employed by the plaintiff as an experienced professional computer programmer, wrote a source code for a performance monitoring tool, Sysview, designed to work on the HP3000 computer. After leaving the plaintiff, Duncombe wrote a source code for a performance monitoring tool for the HP3000 computer which he marketed through the corporate defendant in competition with the plaintiff. Duncombe was not an officer or director of his former employer. Some basic monitoring tools or programs were in the public domain and were freely contributed to the public by their creators. Duncombe on leaving took with him some materials including a list of lessees of the plaintiff for its Sysview program. The plaintiff took action for copyright. infringement of the program and a licensing agreement, taking of trade secrets, and breach of fiduciary duty The plaintiff pointed to similarities between the systems Assess and Sysview, “bugs” in each system, the short time taken by Duncombe in writing the program Assess, the fact that both programs support the same terminals, the use of the same hidden command and certain numbers in both systems. The plaintiff had obtained an interlocutory injunction restraining the defendants from marketing the program Assess. It alleged that the defendants were in breach of that order. Held: 1. Result The action is dismissed. The charge of contempt is also dismissed. The damages suffered by the defendant by reason of the injunction are to be assessed,DetRina Corp. ¥. TRIOLET SySTEMS INC. 8 2. Copyright (a) Subsistence of copyright By statute, copyright subsists in a computer program as a set of instructions embodied or stored in any manner. This definition includes both literal and non- literal aspects of the program. A particular screen display is a visual reproduction of the instructions that the creator of the program embodied or stored in the computer. If someone copies the screen display he infringes any copyright of the owner of the work held in it. The sereen displays of the two programs are not simply the products of the two programs. They are the most essential part of them. In determining what parts of a program are subject of copyright the court will take three steps, namely, abstraction, filtration and comparison to distinguish an idea from its expression. The three-step test will also be applied to the determination of substantial similarity for infringement. The plaintiff's allegation that Duncombe copied the look and feel of the Sysview user interface (the display screens and keyboard commands) presupposes that Sysview’s user interface or substantial portions of it are copyrightable. It cannot be concluded that any substantial portion of the Sysview interface is subject- matter for copyright. (b) Infringement of copyright Any copyright of the plaintiff was not infringed by the defendants. Duncombe had ample time to design, write and test the source code, Assess, write the manual for the program, perform the consulting work and other tasks without having copied the source code Sysview. All the similarities of the two programs, of which there are many, both as to source code and other portions of the programs, can be accounted for without any suggestion arising that there was copying. Some information came from a common source. Copying ideas from functional products is not enough to establish infringement. In determining infringement a method must be found to weed out or remove from copyright protection those portions not protected by copyright. The extrinsic evidence does not justify a finding of copying, The so-called bug was deliberate on the part of Duncombe, who was the author of both programs, to deal with a difficult programming problem, The logical reason for making Assess capable of supporting all the terminals that Sysview supported was to enable Duncombe to say Assess could do everything that Sysview could do and more. The fact that both programs have the same hidden command is not intrinsic evidence of copying. Duncombe simply used the same convention for the same purpose in Assess as in Sysview. Duncombe's evidence that Assess was written without copying Sysview is accepted, Any lines he copied were unwittingly copied and were de minimus. Any copyright in the licence agreement belongs to the solicitor not the plaintiff. 8, Breach of fiduciary duty Duncombe was not a person who ran the plaintiff company. He was not an officer or director. The submission that Duncombe owed his former employer a duty beyond the duty of respect for trade secrets and keeping customer lists confidential is rejected.4 CANADIAN PATENT REPORTER 47 C.P.R. (3d) Duncombe was not privy to secret or special knowledge of customers. He did not become aware of any special business opportunity of the plaintiff. Duncombe owed no duty not to use skills he acquired while in the plaintiff's employ. 4, Trade secrets and customer lists (a) Trade secrets Duncombe did not have any seerets about the Sysview product. He was not taught trade secrets or anything else by the plaintiff which he used or was likely to use in competition with the plaintiff. The pricing policy of the plaintiff is not a trade secret. The pricing of the plaintiff would quickly have become apparent in the market. The function of Sysview and exactly what information it could produce for a user is not a trade secret. (b) Customer lists Duncombe retained customer lists prepared by him when he was with the plaintiff including a list of those customers that had leased the Sysview program, ‘The most likely customers for the Assess program were HP3000 computer owners who did not have performance monitors. Sending promotional material to all HP3000 owners could be easily accom- plished without borrowing a list of such owners from the plaintiff. Whether the lists were kept deliberately or accidentally, there is no evidenee that they were misused to the prejudice of the plaintiff. ‘The issue of customer lists is of little help to the plaintiff. Structural Dynamics Research Corp. u. Engineering Mechanics Research Corp., 401 F Supp. 1102 (1975); Northern Office Micro Computers (PTY) Ltd. v. Rosenstein, [1982] FS.R. at p. 188; Lotus Development Corp. ». Borland Interna- tional, Inc., U.S. Dist. LEXIS 11358 (1992), apld Canadian Aero Service Ltd. v. O'Malley (1978), 11 C.PR. (2d) 206, 40 D.L.R. (8d) 371, [1974] S.C.R. 592; Creditel of Canada Ltd. v. Faultless (1978), 36 C.PR. (2d) 88, 81 D.L.R. (8d) 567, 2 B.L.R. 239, 18 O.R. (2d) 95, distd Broderband Software Inc. v. Unison World Inc., 648 E Supp. 1127 (1986); Apple Computer, Inc. v. Microsoft Corp. and Hewlett-Packard, U.S. Dist. Ct., August 7, 1992, consd Other cases referred to Edgar T. Alberts Lid. », Mountjoy (1977), 86 C-ER. (24) 97, 79 D.LR. (8d) 108, 2 BLR. 178, 16 OR, (24) 682, [1977] 2 A.C.WS. 314; Computer Associates International, Inc. v, Altai, Inc., Second Cireuit U.S. Court of Appeals, June 22, 1992; Lotus v. Paperback, 740 F. Supp. 37 (1990); Carolian Systems Interna- tional Inc. v. Triolet Systems Inc. (1989), 26 C.PR. (8d) 87, 14 A.C.W.S. (8d) 425 Statutes referred to Copyright Act, R.S.C. 1985, ¢.C-42, ss.2, definitions “computer program” [enacted R.S.C. 1985, ¢. 10 (4th Supp.), s. 1(3)], “literary work” rep. & sub. idem, s. 1(2)], 8(1)(d), 5(1) Copyright Act (US.), 8. 102 AcTION for copyright infringement, breach of fiduciary duty, taking of trade secrets, dismissed.DBLRINA CorP. V. TRIOLET SYSTEMS INC. 5 Thomas J. Dunne, Q.C., and Nyron B. Dwyer, for plaintiff. T. James Treloar, Paul K. Mergler and Paula L. Bateman, for defendants. O’Leary J.:—Carolian Systems International Inc.’s action for an injunetion restraining Triolet Systems Inc. and Brian Dun- combe from copying or using the computer programs of Carolian has been tried together with an issue as to whether or not Triolet and Duncombe should be held in contempt of court for breaching the March 29, 1989 order of McRae J., which prohibited them from marketing the product Probe 3000 [Carolian Systems International Inc. v. Triolet Systems Inc. (1989), 25 C.PR. (3d) 87, 14 A.C.WS. (8d) 425 (H.C.J.)]. Since it began this action, Carolian has merged with Delrina Corporation and since that merger the action has been carried on by Delrina. I will, however, in these reasons refer to Carolian as being the plaintiff and make no further mention of Delrina. Duncombe, a highly experienced programmer, was employed by Carolian from January, 1984 to December 4, 1985. During much of that period, Duncombe’s task was to improve the function of, and rewrite the source for, “Sysview”, a performance monitoring tool that Carolian had developed for use on a Hewlett-Packard com- puter known as the HP3000. The Sysview program assisted a user of it to determine whether a HP3000 computer was being used efficiently and, if not, how to improve its efficiency. Carolian licensed the use of its Sysview program to the owners of HP3000 computers. Carolian also contracted to assist or “support” licensees in their use of Sysview. Near the end of May, 1986, Carolian learned that Duncombe was marketing a program he called Assess 3000 that was markedly similar in function, appearance, and operation to its Sysview product. Carolian brought this action on July 2, 1986, and, eventually, obtained an interlocutory injunction in effect prohibiting Duncombe and his company Triolet Systems from marketing Assess, After a lengthy trial, Carolian has not satisfied me that it is probable that Duncombe in creating Assess copied any substantial portion of the Sysview program. While I cannot and do not exclude the possibility that Duncombe copied portions of Sysview’s struc- ture, source code, and user interface (see Glossary, app. A, attached, for meaning of technical words used herein [post, p. 48]), I am not convinced that it is more likely than not that he did. Assess and Sysview are so similar that the possibility of6 CANADIAN PATENT REPORTER 47 C.P.R. (8d) copying cannot be excluded. Sysview and Assess are performance monitoring tools designed to work on the HP3000 computer. They have then the same purpose or function. Duncombe’s memory, experience, and idiosyncratic programming methods and habits, plus the limitations on variation imposed by the Hewlett-Packard HP3000 computer, can account for all similarities. Since copying by Duncombe has not been established, Carolian has not proved that Duncombe infringed any copyright it holds in the computer program, Sysview. Carolian alleges not only copyright infringement against Dun- combe, but also that on leaving Carolian he breached a fiduciary duty he owed to Carolian, by creating a program similar to Sysview and using it to compete against Carolian. Duncombe was employed by Carolian as a highly skilled programmer. He was not an officer or director nor one who ran or helped run Carolian. While at Carolian, Duncombe increased his familiarity with performance monitoring tools. He rewrote the source code for Sysview and enhanced its abilities. In doing so he may have upgraded his programming skills. He owed no duty to Carolian not to use skills acquired or improved while working for it, even if by using them he directly competed for business with his former employer. Carolian’s request for an injunction prohibiting the marketing of Assess is, therefore, denied. Tam not satisfied that Duncombe violated the order of McRae J. and so find Triolet and Duncombe not guilty of the contempt of court allegation made against them. History The issues in this action arise out of the background and conduct. of two men, Joseph Ian Campbell, the former president of Carolian, and Brian Duncombe, one of the defendants. Campbell began working for Hewlett-Packard in 1974 and left Hewlett-Packard in 1981 to begin his own consulting business. While at Hewlett-Packard he received extensive and thorough training, both in Canada and in California, in regard to the HP3000 computer. He learned the entire make-up of both the hardware and software of the HP3000. So far as this case is concerned, it is of particular relevance that he become thoroughly knowledgeable in regard to that computer’s Multi-Programming Executive system (MPE), an operating system which provides services to programs written and used by others, such as Sysview. The programming language or code used for programming the operating system of the HP3000 is called SPL and that language is unique to the HP3000. :DELRINA Corp. V. TRIOLET SYSTEMS INC. 7 As indicated, Campbell left Hewlett-Packard in 1981 to become an independent consultant. To enable him to advise owners of HP8000 computers as to the state of efficiency of their computers, Campbell needed a diagnostic or performance monitoring tool that, would tap into and relay back to him, or any user of it, information being created or stored in the computer as to the amount and kind of use then being made of the computer by perhaps hundreds of persons located at various terminals connected to it, and the rate at which the computer was handling the various tasks being given to it. Some rather basic monitoring tools or programs were already in the public domain, having been freely contributed by their creators, and so available to anyone who needed them. Campbell put. together in one program, and used as his monitoring tool, a lot of individual efforts produced by others. Gradually, Campbell made deletions from an improvements to his monitoring tool. By 1983, he had improved the program to the point that it was a saleable product. By that time he had rewritten most of the source code for the program. Campbell also wrote an electronic spread sheet program he named Cale-1. On April 12, 1983, with the assistance of one McElroy, who provided the capital, and one Gurney, who was to spearhead marketing, Campbell incorporated Carolian Systems Inc. Market- ing of Sysview and Cale-1 did not commence until after this date. In 1983 Carolian hired Theodore Rypma to improve Calc-1. He was also to “support” it, that is to say, to teach and advise customers who leased it as to its proper use. In January, 1984, Carolian hired Duncombe to do the same thing for Sysview. Duncombe was assigned the task of turning Sysview into a more functional and robust product. He was given the freedom to completely rewrite it and that is what he chose to do. Brian Duncombe had been employed at Hewlett-Packard from 1978 to 1984. Like Campbell, he also received extensive training in regard to the HP3000 computer, both in Canada and in California. He spent much of his time writing source code to meet the particular needs of customers using various programs that oper- ated on the HP3000 computer. Some indication of his expertise as a writer of computer programs is to be found at ex. 1, vol. 1, tab 33. That exhibit is a proposal made by the Duncombe to Northern Telecom as to a program Duncombe was prepared to write for it to permit it to maintain an up-to-date back-up for all information stored on a computer. Northern Telecom apparently did not accept the proposal and order the production of the program. The exhibit illustrates how a programmer must conceive exactly how he will8 CANADIAN PATENT REPORTER 47 C.P.R. (3d) accomplish a particular task and reduce that concept to writing before he can design the screen displays and write the source code that will make his concept a reality. This particular concept created by Duncombe later became the basis for a program produced by Carolian and called “Shadow” or “Silhouette”. According to Gurney, when Carolian hired Duncombe in January, 1984, Duncombe was then one of two top technical experts at. Hewlett-Packard Canada. Gurney testified that Duncombe had particular expertise as a computer performance expert. When he started working for Carolian, Duncombe was asked to look at Sysview and see what he could do to improve it. When he examined the Sysview source code, he noted it was remarkably similar to that of “SOO”, a performance monitor in the public domain. This is not surprising for Campbell testified that when he first put together his performance monitoring tool, that later became Sysview, he had used a “SOO” program that had been rewritten by a friend. As already indicated after he had examined Sysview, Duncombe thought it best that he start from scratch and create a professional product. He prepared the design for the new version of Sysview in a week or two. He started writing source code, testing and debugging that code, in the latter half of March, 1984. By the end of June, Carolian was testing the new Sysview and showing it at trade shows. It was released to certain chosen prospective custo- mers for “Beta” testing in late August, 1984. It was ready for general release by October, 1984. Most of Duncombe’s time both before and after October, 1984 was spent on Sysview, up until July, 1985 when he turned it over to William Douglas Woods, another Carolian employee. A program such as Sysview is constantly being upgraded in response to information and demands from its users. Substantial changes were made to it after October, 1984, such that. revised versions of it were released in May, June and July, 1985. For reasons not relevant to this action, Duncombe, Rypma and a third employee, Ste. Marie, decided to form their own company to create computer programs and to perform consulting work. They resigned at Carolian on December 3, 1985, and incorporated a company under the name Triolet Systems Inc.. But in January, 1986, Rypma and Ste. Marie decided to give up the idea and took employment at Hewlett-Packard. Duncombe decided not to return to Hewlett-Packard and to stick with Triolet on his own. He decided to develop a performance monitoring ‘tool. He knew that such a program would have to compete directly with Carolian’s Sysview product. He, therefore, determined that, generally speaking, it should perform every taskDELRINA Corp. V. TRIOLET SysTEMs INC. 9 that Sysview was capable of performing. He planned as well to improve on Sysview and in fact did so. He began working on his program (Assess 3000) about the middle of January, 1986. He began writing the source code for it in early February and Assess was ready for Beta testing by May 7, 1986. Duncombe thus spent approximately three months writing the source code for Assess. He testified that he had written the source code for the new version of Sysview which he had created for Carolian in approximately four and one-half months. At the end of May, 1986, he was demonstrating Assess at a trade show and an employee of Carolian noted that it was very similar to Carolian’s program, Sysview. On learning of the existence of Assess, Campbell immediately concluded that it had been copied from Sysview. He was and still is of the view that Duncombe could not have created Assess by May, 1986, unless in doing so he copied the Sysview source code. The time taken by Duncombe to create Assess is in the mind of Campbell irrefutable evidence that he copied it from Sysview. In using the word “copying”, Campbell uses it in the literal sense. He means that Duncombe had a copy of Sysview before him, including its source code, when he created Assess and that he copied from it when it benefitted his work to do so — which was most of the time. Campbell is not talking about copying from memory that Duncombe might have had for some portions of the source code, the display screens, and other portions of Sysview from having created it from scratch while at Carolian. I also, in these reasons, use “copying” in the literal sense I have just described. Certain that Duncombe had copied Sysview and that it was illegal for him to have done so, Campbell set about building a case against Duncombe that he could use to get an injunction that would prohibit Duncombe from marketing Assess. Campbell as a highly trusted former Hewlett-Packard employee had access to Hewlett-Packard’s premises in Mississauga and to the Hewlett- Packard computer that various customers of Hewlett-Packard used from time to time. Campbell guessed correctly that Duncombe was using the Hewlett-Packard computer. Campbell was able to locate the material that Duncombe had stored on the Hewlett-Packard computer. Campbell quickly reviewed that material and satisfied himself that it contained material that in his view Duncombe had illegally taken from Carolian, including a record of those customers of Carolian that had leased from Carolian its Sysview program. Campbell copied onto a tape he had taken with him for that purpose the material Duncombe had stored on the computer at Hewlett-Packard. He eventually sent a copy of this material to his10 CANADIAN PATENT REPORTER 47 C.P.R. (8d) solicitors and it was used by them in obtaining the interlocutory injunction I have already mentioned. While during the trial Duncombe claimed he had not retained any documentary or other records or material that he had prepared or made copies of while employed by Carolian, I conclude that he had retained lists, quite properly prepared by him while at Carolian, of Carolian customers and in particular those customers that had leased the Sysview program from Carolian. Those lists had been prepared by Duncombe for use in his frequent dealings with Carolian’s customers for it was part of his duties to “back up” the Sysview product in the hands of customers. Further, prior to his leaving Carolian, he had been working on a new program that might have held special interest for customers that had already acquired Sysview. Why Duncombe retained those lists is not altogether clear. While in marketing Assess he would be competing directly with the Sysview product, HP3000 owners who had already purchased one performance monitor (Sysview) were not the most likely persons to want to acquire another (Assess) even if Assess could perform a few chores Sysview did not. Rather, his most likely customers would be HP3000 computer owners who did not have performance monitors. It is quite clear on the evidence that sending promotional material to all HP3000 owners could be easily accomplished without borrowing a list of such owners from Carolian. While at Carolian, Duncombe had always kept at his home a back-up tape of Carolian’s programs and other records, just in case . by accident those records kept at Carolian’s premises were lost. This was done with the full approval of his superiors at Carolian. On this same back-up tape Duncombe kept his own records, such as copies of papers he had presented at trade shows both before and while being employed by Carolian. Duncombe testified that after leaving Carolian in December, 1985, he destroyed all Carolian property in his possession and eliminated from his back-up tape everything except the record of his own material. I found both Campbell and Duncombe to be exceedingly believa- ble witnesses each fully convinced of the righteousness of his own actions. Duncombe testified that when he first received Campbell’s affidavit in July, 1986, indicating that Campbell had found a list of Carolian customers on Duncombe’s file at Hewlett-Packard, he assumed that he had missed removing that information when deleting Carolian from his tape. He said that shortly thereafter, he went to Hewlett-Packard and removed that material from his records at Hewlett-Packard.DELRINA CorP. V. TRIOLET SYSTEMS INC. u Years later, he learned that what Campbell ended up with, after he had looked at Duncombe’s files at Hewlett-Packard, was a very garbled version of what was on those files. I accept Campbell’s evidence that through errors made by him he ended up with the with only parts of what was on some of those files. Duncombe, on the other hand, is now convinced that he removed all Carolian property from his back-up tape in December, 1985, and that Campbell or someone from Carolian planted those customer lists and other material on his files at Hewlett-Packard. I am satisfied that Duncombe is mistaken in that regard. Since the customer lists would be of slight value to Duncombe, it is hard not to accept his original position that he simply missed removing them from the back-up tape in December, 1985, and they remained on by error, At least one of the two lists of names and addresses found by Campbell contained not just the names of Carolian customers or prospective customers, but also names of contacts (persons not Carolian customers) Duncombe had built up over many years, both before and while working at Carolian. I have a lingering doubt that Duncombe retained those lists deliberately, not wanting to go to the trouble of weeding out his list of contacts from those of Carolian customers or prospective customers. Whether those lists were kept deliberately or accidentally, there is no evidence there were misused in any way to the prejudice of Carolian. While I have no doubt that the existence of those lists on Duncombe’s files at Hewlett-Packard helped Carolian obtain its interlocutory injunction of February 3, 1987, the lists themselves are not the subject-matter of that injunction. That injunction prohibited the defendants from marketing Assess and from using, copying or selling any of the plaintiff’s computer programs. In dealing with the allegation that Duncombe copied Sysview in creating Assess, I find the issue of the customer lists of little help. I deal now with what Carolian alleges is evidence of copying. (1) Assess could not have been created in so little time unless there was copying of Sysview The argument of Carolian goes as follows: Duncombe did not commence to write the source code for Assess until February 6, 1986. Assess was released for Beta testing on May 8, 1986. During that three-month period Duncombe did not spend all his time writing and debugging code, for he did some consulting work for Carolian, wrote a 100-page manual for Assess, and attended at least one trade show during that period. The source codes for12 CANADIAN PATENT REPORTER 47 C.P.R. (3d) Assess and Sysview are both approximately 14,000 lines in length. For Duncombe to have written the source code for Assess in that three-month period he must have copied the source code of Sysview. Further, writing and debugging source code is not the only major time consumer in the creation of a computer program. Designing the product, that is to say, deciding on its function and just how that function is to be accomplished, how the information located by the program will be displayed on the screen for the user, and how the user will command the program to produce desired information together take up 35% of the time required to create a computer program such as Assess. There must then have been copying not only of source code but also of the concepts and designs that produced Sysview. Answer: Duncombe decided after being hired by Carolian, that if Sysview was to perform the functions that Carolian wanted it to perform then it had to be completely rewritten. The ideas for the rewritten Sysview, so far as screen layouts, command and modifier structure of the user interface and the internal structure and program code are concerned, were Duncombe’s. Duncombe began his design and rewriting of Sysview in the latter half of March, 1984 and had it completed to Beta test stage in approximately four and one-half months. Having already designed Sysview, Duncombe was able to design Assess in a fraction of the time it took him to design Sysview. Stanley R. Sieler Jr., a computer expert who has worked with the HP3000 since 1978, including four years with Hewlett-Packard in its operating system laboratory in California, testified that an experienced programmer could have written the source code for Assess in three months of normal 40-hour weeks. Duncombe in writing Assess was working for himself, and not 40- hour weeks but, perhaps, double that number of hours per week. He had ample time to design, write and test source code, write the manual for the program, perform his consulting work, and any other tasks referred to by the plaintiff, by May 8, 1986 — without having copied from Sysview. (2) The similarities between Assess and Sysview are so great the former must have been copied from the latter Answer: In my view, all the similarities, and there are many, can be accounted for without any suggestion arising that there was copying. As pointed out by Sieler, a HP3000 performance monitor operates by communicating with the computer's operating system and by telling it either it wants information about the computer’s activity that is stored in the “measurement interface” (a feature built into the HP3000 for that very purpose), or by telling it itDELRINA Corp. V. TRIOLET SYSTEMS INC. 18 wants to measure particular activities or processes that are not measured by the interface but is to be found in specific locations as documented in the system tables manual that is put out by Hewlett-Packard. The obtaining of information by using the system tables can only be accomplished in the manner dictated in the manual. Given that Hewlett-Packard has determined what information is available to be dug out and displayed on a screen for the benefit of a user and in regard to certain information just exactly how it is to be retrieved, I have no hesitation in accepting Sieler’s statement. that “given the nature of some of the coding problems in system monitor programs (e.g. Assess, Sysview, OPT, SOO, Glance, Probe, and others) a degree of similarity would be expected across all such programs, regardless of who authored them”. But here Duncombe was the author of both Sysview and Assess. In my view, the similarities that exist are all accounted for by: (a) the intention to make Assess capable of performing every function that Sysview can perform; (b) the fact that the measurement interface documentation (pre- pared by Hewlett-Packard) has a long list of “names” of items it returns. A programmer who wishes to use the measurement interface will typically create variable names with a common prefix, representing different kinds of data returned by the measurement interface. Additionally, the variable names will typically be created and listed in the same order in the source code as the item names are given in the measurement interface documentation; (c) programmers develop styles or habits, in their programming; (d) a programmer will develop a “bag of tricks”, or a common way of approaching problems; (e) some problems in programming do not lend themselves to multiple solutions. Such problems can be solved in only one or two ways, no matter how many different programmers tackle them; (f) many lines of source code in both Assess and Sysview are common to HP3000 performance monitoring tools; (g) Duncombe, where he found it enhanced the ability of Assess to compete with Sysview, and where he felt a change from his designing of Sysview would not improve Assess, created user interface, including screens, in Assess virtually the same as those in Sysview — not by copying from Sysview but from his memory;14 CANADIAN PATENT REPORTER 47C.P.R. (3d) (h) it is not evidence of copying that the author of both Sysview and Assess should choose to make available to the user of each, much the same information, even though much more informa- tion has been made available by Hewlett-Packard on its HP3000. The author would choose the information that is most helpful. 3. There is here intrinsic evidence of copying, that is to say, the same unusual phrasing, and mistakes or “bugs” in both Sysview and Assess Answer: Such intrinsic evidence would establish copying for even the same author would not by accident make the same mistakes in both Sysview and Assess, unless he copied one from the other. (a) Input “Bug” Campbell testified that Sysview and Assess have a common “pug”. Each program has an exception reporting feature. Sysview has Asyst and Assess has Xpert. The feature permits the user to specify minimum and maximum parameters for certain statistics reported on by the program. Both programs provide a separate screen for inputting new parameters. Asyst and Xpert report to the user every time the parameters are not met. For example, a user may input 2.5 seconds as the maximum for response time. Every time the response on the system is above 2.5 seconds, the feature reports that occurrence to the user. In both Sysview and Assess the number inputted by the user is . not always the number that becomes the new minimum or maximum parameters. If and only if the following conditions are met will the result be equal to the input: (i) there must be a decimal point in the inputted number; (ii) there must be at least one character before the decimal point; (iii) there must be exactly one character after the decimal point. Most often (but not always), the number inputted comes out as 1/10th of the inputted figure. Another way to explain the alleged bug is that the decimal is removed by the program from the inputted number, if there is one, and then a decimal point is put back in the number one decimal place from the right. The reaction of the program to inputted numbers is as follows: If the input is 2.5, the result is 2.5. Tf the input is 2.50, the result is 25. If the input is 2, the result is .2.DELRINA CorpP, V. TRIOLET SYSTEMS INC. 15 If the input is 20, the result is 2. If the input is .25, the result is 2.5. Duncombe explained that this alleged flaw or bug, common to both Sysview and Assess, was not a flaw or bug, but was deliberate on his part. As Sieler explained, the HP3000 operating system will not handle decimal points and this makes it difficult for a programmer to write code that will deal with inputs with anything different from a predetermined number of decimal points. The evidence is uncontradicted that this particular function of Sysview and Assess known as Asyst and Xpert, respectively, is one that is seldom used. As Duncombe explained, if the user of either Sysview or Assess enters the new parameters using the format. precisely in the form, as shown by the existing ones on the screen, then the program will accept the new parameters as given to it and the user will see that his new parameter has been accepted as given. If the user leaves out the decimal point and say inputs 2 instead of using the screen format of 2.0, he will see immediately that the program has recorded his parameter as .2. In Duncombe'’s opinion, the user will quickly learn to use the screen format exactly, or realize that the program accepts his instruction as being in 1/10th of seconds, that is to say, that the program accepts the parameter 2 as asking it to respond as if the request were .2 seconds. Duncombe says he dealt with the decimal problem in this way to save excessive programming work. In short it was his way of dealing with a difficult programming problem. The Sysview manual, apparently prepared by someone other than Duncombe and perhaps even after he left Carolian, instructs the user that in regard to new parameters, a decimal is implied, but the alleged “bug” was not fixed. Duncombe used the same general method for changing parame- ters when he wrote Assess as he had done when he wrote Sysview. He did not, however, according to the evidence of Sieler, use the same code and in fact used different algorithms in places. Even if one accepts, as Sieler eventually did, that it is a form of flaw or a “bug” for a program to alter a parameter inputted by the user, it does not follow in this case that the “bug” was unwittingly copied. Duncombe having determined how he would deal with the coding problem when he wrote Sysview simply decided to deal with that problem in the same way when he wrote Assess.16 CANADIAN PATENT REPORTER 47 C.P.R. (3d) (b) Sysview and Assess support (will work on) the same terminal types even though some of them are rare Counsel for Carolian submits that supporting those’ terminals made commercial sense for Carolian because it had customers with those terminals and Carolian itself owned one of those terminals. But it is submitted the chance of Duncombe finding a customer with those rare terminals was so slim that it made no sense for Assess to support them. Therefore, the argument goes, Assess supported the same terminals simply because Assess was copied by Duncombe from Sysview. I have trouble understanding the logic behind this argument. It seems to presuppose that copying could be done by some kind of program or converter and would have required no effort or time on the part of Duncombe. Even copying of code requires considerable effort, so if supporting the terminals made no sense, then the copying also makes no sense, Further, Sieler analyzed the program source codes in Assess and Sysview supporting the terminals in question and found them to be significantly different not only in expression but also in methods and algorithms used. In fact the source code supporting the terminals was not copied. The logical reason for making Assess capable of supporting all the terminals that Sysview supported was to enable Duncombe to say Assess could do everything that Sysview could do and more. (c) The use of the numbers 96 and 64 in the code for the HDS 108 terminals in both Sysview and Assess Campbell testified that for no good reason in writing the source code to permit Sysview to support the HDS 108 terminal, he chose to use the numbers 96 and 64 instead of using their more efficient equivalent characters. According to him it is unusual and sheer chance that Sysview source code contains those numbers. Assess source code for the HDS 108 terminal also uses 96 and 64 and so Campbell says that is intrinsic evidence of copying. Duncombe testified that when he rewrote Sysview and when he wrote Assess he used 96 and 64 in the source code for the HDS 108 terminal because the HDS 108 manual that he had to follow to write that source code left him uncertain about the exact characters he could use in place of those numbers. Accordingly, it was safer to use the numbers and that is why he used them. I find that explanation much more plausible than that of Campbell, especially since no witness took issue with it. The use of 96 and 64 in both source codes is not evidence of copying but only of prudent coding.DELRINA CorP. V. TRIOLET SYSTEMS INC. WwW (d) The same hidden command is found in both Sysview and Assess Sysview has a command hidden from an ordinary user which provides timing information. Hidden commands are used by programmers in the development stage and are sometimes used for support purposes when a customer has a problem with the product. Sysview’s hidden command for timing is called by inputting a dollar sign symbol ($). In Assess, the hidden command is called by inputting the same symbol. That is not intrinsic evidence of copying. It was Duncombe’s convention to use a dollar ($) sign as the symbol to access timing information because “$” represents the “cost” in computer system time that it took to run the program. He simply used that same convention for the same purpose in Assess. 4. A comparison of the source codes for Sysview and Assess show overwhelming similarities that could only arise through copying Answer: Except for some 60 lines of code out of 14,000 lines, something I will return to, the evidence does not support this proposition. Sieler, a computer expert who examined the source codes of both Sysview and Assess, states in his report ex. 39, “Assess is new and has not been copied from the source code for Sysview.”. I have reached the same conclusion. I have already stated why similarities exist in the two programs without copying and these reasons apply to the source code as well as to other portions of the programs. Carolian in the fall of 1986, sent copies of both the Sysview and Assess source codes to an expert, Mr. Lowell Arnoff, for his opinion as to whether that of Assess had been copied from Sysview’s. Arnoff reported to Carolian but his report has never been produced and he did not testify at the trial. I assume his evidence would not have helped Carolian. Of greater concern is the fact that at the time of the successful motion for an interlocutory injunction, on February 3, 1987, before Fitzpatrick J., the existence of a report from Arnoff was not revealed to the court or the defendants. Fitzpatrick J. might well have refused the injunction unless the report was made available to him. It should perhaps be pointed out that the source code for Sysview is written in SPL computer language while that for Assess is written in MSPL. That fact does not, of course, eliminate the possibility of copying. An original literary work protected by 2—47 CPR. (8d)18 CANADIAN PATENT REPORTER 47 C.P.R. (3d) copyright and written in English is just as much copied if the plagiarist copying it translates it into German. Also it should be noted that Assess is broken down into two distinct processes although that fact is not apparent to the user of it. One process collects the desired data and passes it through a “pipe” to the second process which displays it for the user. Sysview uses one process only. While neither of these substantial differences between Sysview and Assess prevent copying, they do show Duncombe’s mind set — to create in his own way a more elegant and comprehensive monitoring tool and on all the evidence that is what he accom- plished. Finally, I accept Duncombe’s evidence that he created Assess without copying Sysview in any way. 60 lines of source code After Duncombe had finished rewriting Sysview, he was asked to help write a new program called Intact. To write that program he had to access the same system tables information he had accessed when writing Sysview. The method of accessing that information is not very original since it is dictated by the Hewlett-Packard MPE 5 System Tables Manual. He extracted the relevant source code (something less than 60 lines) from Sysview and used it in Intact. Because it might be useful in writing some other program, he also added a copy of it to his tool kit (a lawyer might say his book of precedents). It actually was added to the tool kit of a fellow employee, one Ste. Marie, which tool kit Duncombe had access to and later received from Ste. Marie. When Duncombe was writing Assess he remembered he had the code in his tool kit and used some of it — perhaps 40 lines — without it occurring to him that its original source was the Sysview code. Thus, unwittingly, he copied those few lines of Sysview code in writing Assess. Had he chosen not to use his precedent from his tool kit, it would have taken him 15 to 20 minutes to write the code he copied. While the decision as to which tables to access for the data contained therein is up to the writer of the program and depends on his assessment of the usefulness of the information from particular tables, the actual accessing must be done as directed in the Hewlett-Packard MPE 5 System Tables Manual. In fact, Assess has additional system tables definitions not contained in Sysview. According to Sieler, the lines of code in question are only slightly more efficient replacements for procedures provided to all HP3000 users by Hewlett-Packard. As such it is questionable that suchDELRINA Corp. V. TRIOLET SYSTEMS INC. 19 lines of code have the necessary originality of expression to be copyrightable. But even if they do, those lines are de minimus in both the Sysview and Assess programs. Such minor copying would not sustain an action for breach of copyright. Breach of fiduciary duty by Duncombe While I have briefly reviewed the expertise of Duncombe under the heading History, I feel some further elaboration of that expertise is now necessary on the issue of any fiduciary duty he owed to Carolian. Duncombe is a 46-year-old professional computer programmer. He earned a college diploma in 1967 in Mechanical Technology (Applied Physics and Mathematics). His entire working career has been in computer programming using a number of different computer programming languages, including SPL (System Pro- gramming Language), MSPL, FORTRAN, PL/1, COBOL, RPG, BASIC, and ASSEMBLER, and working with a wide range of small, medium and large computers including those manufactured by International Business Machines (“IBM”), Data General and Hewlett-Packard on the HP3000 computer system. After working for several corporations and for a community college for several years, Duncombe joined Hewlett-Packard Can- ada in Mississauga in 1978, as a systems engineer. He had previously worked for about eight years with issues of system performance, which is the monitoring of the demands of many different users and programs on a multi-user computer system to permit the efficient ordering of priorities and maximization of the productivity of the system. Hewlett-Packard had developed its HP3000 computer system several years earlier and it had become an extremely successful computer for the company with at least 15,000 to 20,000 users world wide. With Hewlett-Packard Canada, Duncombe worked extensively with performance monitor programs and performance issues on the HP3000 computer that was a major product of the company. He trained as a performance specialist with Hewlett-Packard in Canada and spent several months in training at the company’s computer manufacturing and software development facilities in California, He became highly proficient in both the SPL computer programming language developed by Hewlett-Packard for its P8000 computer and in the MPE (Multi-Programming Execu- tive) operating system. The MPE operating system is itself a computer program — being one that acts as an intermediary with the computer hardware and permits the running of application programs on the computer.20 CANADIAN PATENT REPORTER A7C.P.R. (3d) Application programs, which include performance monitor pro- grams, are written in what is referred to as source code. Source code is comprised of rather cryptic English language expressions and readable numbers and symbols. The exact form varies with the programming languages. When the source code is loaded into a computer memory it is “compiled” or converted into a series of symbols that are readable only to the computer hardware. This machine readable form of the program is called object code. Duncombe was promoted to systems specialist at Hewlett- Packard. He was assigned a number of Hewlett-Packard HP3000 customers as his accounts, to provide technical support, and the list of customers changed over the time he worked there. He became acquainted with a large number of the HP3000 users in Canada and ones outside Canada as well. He provided factory level training to Hewlett-Packard staff in performance of the HP3000 computer and in SPL. He provided customer support, training and consulting to customers. He also attended trade shows or conferences and presented technical papers of his own creation on subjects related to computer performance and other areas of interest to technical specialists working with the HP3000 computer. He became a member of Interex, the international organization for users of HP3000 computers, and attended its conferences in North Amer- ica, meeting more HP3000 users outside the Hewlett-Packard corporate environment. Duncombe became fully familiar with the MPE operating system used on the HP8000 while at Hewlett-Packard. This was impor- tant for the writing of performance monitor programs, performing consulting and training services and creating and delivering technical papers at conferences. He fully understood the use of the specialized computer programming and program running tech- niques necessary for performance monitoring, such as accessing the “privileged mode” facility in the MPE operating system. Operating in “privileged mode” is necessary for a performance monitor program to be written and tested but runs the risk of “crashing” the system and terminating the operation of other computer programs that are running at the time. From his education and his experience, Duncombe has the high degree of knowledge of mathematics that the plaintiff's expert Professor Burkowski testified is necessary for the design creation of a sophisticated computer program, and that assists in writing the actual computer program source code. Professor Burkowski testified that there is a great connection between computers and mathematics, and a mathematical “bent” is necessary to create and analyze algorithms to build a computer program that willDELRINA Corp. V. TRIOLET SYSTEMS INC. 21 operate efficiently. This mathematical background is something that Professor Burkowski, the defendant’s expert Sieler, and Duncombe have in common. Professor Burkowski went on to state that having a mathematical background to do programming is helpful but not essential as the programmer can simply follow the dictates of the designer — but the designer should have more of a mathematical background. From the evidence presented at trial, it is clearly seen that a computer programmer with a mathematical background produces a superior product, in less time, than a programmer without such background. David Gurney, the current president of the Carolian division of the plaintiff, testified that, at the time he was approached by Campbell and hired by the plaintiff at the beginning of 1984, Duncombe was recognized as being one of the two top technical experts at Hewlett-Packard Canada. The other was Ted Rypma who also testified for the defence. Gurney further testified that Duncombe was hired for his specific expertise in performance. Campbell and Gurney both knew Duncombe from their own days at Hewlett-Packard and recognized that Duncombe possessed the expert knowledge of the MPE operating system, which was constantly being modified. Duncombe also possessed extensive knowledge of performance of the HP3000 computer and of the available performance monitor programs and tools that the plaintiff needed to turn the Sysview program into a marketable product. At Carolian, Duncombe began by attempting to write enhance- ments to the Sysview program. When the program did not function properly and, in fact, “crashed” the HP3000 computer at a show in California in February, 1984, Duncombe decided that he would have to completely rewrite the program if it was to perform the functions that the plaintiff wanted and was advertising. The ideas for the rewritten Sysview in terms of the screen designs and layouts, the command and modifier structure of the user interface, and the internal structure and program code were Duncombe’s. It is the position of Carolian that Duncombe held such a high position with it that he owed Carolian a larger, more exacting duty, beyond the duty of respect for trade secrets and keeping customer lists confidential owed by all employees to an employer. It is said that in addition he had an obligation of loyalty, good faith and avoidance of conflict of duty and self-interest that continued after he left Carolian, which prevented him from developing and selling a product in direct competition to the Sysview product he had22 CANADIAN PATENT REPORTER 47 C.P.R. (3d) written from scratch and constantly improved over some one and one-half years while he worked at Carolian. It must be emphasized that Duncombe was not one of those who ran Carolian. He was not a salesman. He did attend trade shows and gave lectures and frequently assisted Carolian’s sales staff in regard to difficulties they or their customers had in regard to Sysview. He was a developer of computer programs and a solver of problems, and in particular he rewrote and greatly improved Sysview. He was not privy to secret or special knowledge as to which customers Carolian was about to sell Sysview to. Even if he had such information in December, 1985, when he left Carolian, it would have been of little use to him, being badly out of date, by the fall of 1986, when his program Assess was first ready to be leased to customers. I conclude that Duncombe, while at Carolian, did not become aware of any special business opportunity that Carolian had, did not have such contact with Carolian’s customers as to be able to control their business loyalties, and did not learn from Carolian any secrets about the Sysview product. In support of its fiduciary duty proposition, Carolian relies on certain cases on which I now comment. Canadian Aero Service Ltd. v. O’Malley (1973), 11 C.P.R. (2d) 206, 40 D.L.R. (3d) 371, [1974] S.C.R. 592. The principle enunciated in that case, that a senior manager and officer of a company cannot leave the company and acquire thereafter a business opportunity that he had attempted to acquire for the company, by making use of the information acquired while working for the company, has, in my view, no relevance to this case. Here Duncombe did not take advantage of some business opportunity he had been working on for Carolian. He came to Carolian as a highly skilled programmer with particular expertise as a computer performance expert. He was not taught trade secrets or anything else by Carolian. He may have improved his own skill in designing and programming a performance monitoring tool. Duncombe owed no duty not to use skills acquired while at Carolian, even if by using them he directly competed for business with his old employer. To deprive a man from using his technical skills is a far cry from demanding he not benefit from business dealings he worked on for the employer. Walking off with the benefit of some business venture, acquired because of work done for an employer, cannot be equated to walking away from an employer with skills honed while working for the employer.DELRINA CorP. V. TRIOLET SysTEMS INC. 23 Creditel of Canada Ltd. v. Faultless (1978), 86 C.P.R. (2d) 88, 81 D.L.R. (3d) 567, 18 O.R. (2d) 95 (H.C.J.). Reference to this case is not helpful. There Goodman J. gave an interlocutory injunction, but the employees had signed a non- competition agreement and they were clearly competing. Edgar T. Alberts Ltd. v. Mountjoy (1977), 36 C.P.R. (2d) 97, 79 D.LR. (34) 108, 16 O.R. (2d) 682 (H.C.J.). This case fails to support Carolian’s position. The employee who left the employer was the manager and indeed the operator of the plaintiff's insurance business which was owned by absentee share- holders. Operationally, Mountjoy reported to no one. Indeed Alberts and Mountjoy support Duncombe’s position, at p. 101, Estey C.J.H.C. stated: It is now beyond argument that a departing servant has the right to compete with his former employer. He may do so by establishing a business in direct or partial competition and he may bring to that business the knowledge and skill which he acquired while in the former service, including knowledge and skill directly obtained from the previous master in teaching him his business. In my view, the cases quoted by counsel for Carolian do not support the proposition that Duncombe owed some fiduciary duty to Carolian over and beyond that of all employees, namely, the duty to keep confidential, trade secrets and customer lists. I now turn to the question of whether Duncombe failed to respect Carolian’s trade secrets. For Carolian to succeed on the basis that Duncombe breached some duty of confidence he owed to Carolian in regard to trade secrets, it first must show that he acquired some trade secret belonging to Carolian and had used it or was likely to use it in competition with Carolian. I have already dealt with the customer lists that Duncombe kept while at Carolian which he retained, perhaps by accident, after he left Carolian. Those lists were never used by him to compete with Carolian and, in my view, would not have been so used. They would not have been used to compete against Carolian because Dun- combe would not have singled out as likely customers those who had already acquired a performance monitoring tool (Sysview). Further, Duncombe because of his long years in the computer programming field, his delivering of papers at trade shows, his many years at Hewlett-Packard where he was frequently consulted by HP3000 owners, had built up a widely recognized reputation in the area of computer efficiency enhancement and had in turn24 CANADIAN PATENT REPORTER 47 C.P.R. (3d) become acquainted with a vast number of HP8000 computer owners. He did not need a list of persons Carolian had dealt with in order to market Assess. His primary method of marketing Assess was going to be to demonstrate it at trade shows and arouse interest both by the superiority of his product and his own expert ability to guide and assist anyone who should lease it. He would also have advertised his product in the Interex publication received by thousands of HP8000 owners. If he wanted to send out promotional material to HP3000 owners he did not need a list of Carolian customers to do so. Interex would assist in that regard. Obviously, he was also able to approach any contact that he knew would be particularly likely to want Assess because of the confidence placed in him. In short, the records of Carolian customers legitimately pre- pared by Duncombe while at Carolian and retained by him, perhaps by accident when he left Carolian, were of little use to him, and I find that in any event were destroyed by him in the summer of 1986, when their existence proved an embarrassment to him and might assist Carolian to obtain an injunction. After hearing evidence during a six-week trial, I am satisfied that those customer lists were never used by Duncombe to the prejudice of Carolian and were destroyed by him some six months before the interlocutory injunction of Fitzpatrick J. of February 3, 1987. In retrospect, they could not have been even partial justification for that injunction and, of course, are no justification for the permanent injunction I am asked to give. Carolian argues that while working for it, Duncombe became familiar with its pricing policies for Sysview and in particular just how much Carolian would reduce the list price if need be to make a sale. In my view, Carolian’s pricing policy is not a trade secret. The customers who purchased Sysview, or at lease some of them, would have known what kind of reduction in price they were able to negotiate. But even more telling is the certainty that if he had been allowed to compete with Sysview it would quickly have become apparent to Duncombe what Sysview price he had to beat if price became important, to making a sale of Assess. Where price becomes the obstacle to a sale, no matter what the product being sold, the seller will soon learn what price of a competitor he must, meet or beat. Likewise, the function of Sysview and exactly what information it could produce for a user is not a trade seeret. Such information was advertised by Carolian and would be obvious to any user of it. It seems to me that what Carolian is really saying is not that Duncombe learned of special opportunities or secrets fromDELRINA CorP. V. TRIOLET SYSTEMS INC. 25 Carolian, but that in rewriting the source code for and redesigning Sysview, Duncombe created advantages and secrets for Carolian and having done so he was duty bound not to go out and compete by using those advantages and alleged secrets. That is a proposition I cannot accept. On this point, I agree with the view expressed in Structural Dynamics Research Corp. v. ineering Mechanics Research Corp., 401 F Supp. 1102 (E.D. Mich. 1975), at p. 1111: In Northern Office Micro Computers (PTY) Ltd. v. Rosenstein, [1982] FS.R. (Sup. Ct. of S. Africa), the use an employee can make of trade secrets he created for his employer is discussed by Marais J., at pp. 138-140, as follows: ‘The dividing line between the use by an employee of his own skill, knowledge and experience, and the use by him of his employer's trade secrets is notoriously difficult to draw. An employer's trade secret may be no more than the result of the application by an employee of his own skill, knowledge and experience. But, if the employee was engaged to evolve the secret, it remains the employer's trade secret for all that. The employee may not simply copy it if, by copy, one means that literally. For example, if he has conducted a confidential market survey for his erstwhile employer to establish what demand, if any, exists in a particular area for a particular type of product, he cannot simply copy the survey and hand it to his new employer. But non constat that the employee may never again set out to establish the market demand for that particular type of product: in the same area, Generally speaking, he cannot be prevented from using his own skill and experience to attain a particular result, merely because it is a result which he has achieved before for a previous employer. I say, generally speaking, because one can conceive of eases where the result sought to be achieved is so elusive that only a solution of the kind which legend has it prompted Archimedes to say “Eureka” will do, and the employee has been engaged specifically to find it. In such a ease, it may well be that the employee who has evolved the solution may have to refrain from solving it in the same way for a future employer, To pass from the general to the particular. What is there in this particular suite of programmes which gives it a quality of such confidentiality that respondent should be restrained. “from communicating all computer language instructions relating exclusively to the accounting and administrative requirements of doctors and dentists, whether in writing or otherwise, embodied in the suite of programmes designed by respondent for the purposes of producing an accounting system for doctors and dentists irrespective of the nature or26 CANADIAN PATENT REPORTER 47 GPR, (8d) type of computer in conjunction with which such instruction may be used?” In my view, the evidence before me does not enable me to conclude that what has gone into the development of this suite of programmes is of so confidential a character that respondent should be restrained... . I emphasise that I am not here referring to the copying of the suite of programmes. That respondent. plainly cannot do. It is common cause that much work, skill and time is needed to produce a suite of programmes of this kind. If respondent were permitted simply to copy it, he would be unfairly nullifying the advantage of the “long start” over anyone else to which applicants are entitled. To that limited extent, the suite of programmes is, in my opinion, a trade secret: But it does not follow .. . that respondent may not again apply his mind to the development of a suite of programmes to cater for the accounting and financial needs of doctors and dentists, or that, if he does, he must wipe clean from the slate of his memory (as if that: were possible) any recollection he may have of the things which it seemed to him were appropriate for inclusion in such a suite of programmes, or of appropriate formulae, or the like. To accept the contrary view would halter respondent's use of his own training, skill and experience to an unacceptable degree. This remains so whether he is restrained permanently, or for a limited period of two years such as Mr. Dison suggested. As Cross J. said in Printers and Finishers Ltd. . Holloway [1964] 8 AN ER. 781 at 7868: “The law will defeat its own object if it seeks to enforce in this field standards which would be rejected by the ordinary man.” In my view, Sysview, as rewritten and improved by Duncombe, is not the inspired, elusive solution to some unrelenting, intractable problem..relating to the performance monitoring of a HP3000 computer. If it were, then perhaps Duncombe could not have used his skills and memory to solve that problem in the same way for his own benefit or that of a new employer. But the rewritten Sysview is nothing of the kind. Hewlett- Packard so created the HP3000 that it stores the very information {information as to the use being made of it) Sysview retrieves and displays for its user. The creation of Sysview, Assess or any other performance monitoring program for the HP3000 is more the result of the style, technique, effort, and choice of the programmer thi an of inspiration or serendipity. The rewritten Sysview, to the extent it is a trade secret, could not be copied by Duncombe for his own use or that of a new employer. Duncombe was, however, free to create Assess as he did without copying Sysview, no matter how close Assess may be to the rewritten Sysview he had created for Carolian, his former employer.