Paymaster Jamaica Ltd v Grace Kennedy Remittance Services Ltd and Another

• Jurisdiction: Jamaica
• Judge: Harris JA,McIntosh JA,Lawrence-Beswick JA
• Judgment Date: 27 March 2015
• Neutral Citation: JM 2015 CA 44,[2015] JMCA Civ 20
• Court: Court of Appeal (Jamaica)
• Docket Number: CIVIL APPEAL NO 78/2010
• Date: 27 March 2015

Between

Paymaster Jamaica Limited

Appellant and counter-respondent

and

Grace Kennedy Remittance Services Limited

First Respondent and counter-appellant

and

Paul Lowe

Second Respondent and counter-appellant

[2015] JMCA Civ 20

Before:

The Hon Mrs Justice Harris P (AG)

The Hon Mrs Justice McIntosh JA

The Hon Ms Justice Lawrence-Beswick JA (AG)

CIVIL APPEAL NO 78/2010

JAMAICA

IN THE COURT OF APPEAL

SUPREME COURT

COPYRIGHT - Ownership of copyright - Whether trial judge failed to recognize and treat entirely, evidence supporting implication of agreement that appellant would own copyright in its programme - Whether trial judge failed to assess additional evidence which supports appellant's claim - Whether second respondent not entitled to licence the entire programme to third party - Prior acknowledgement of copyright in certain functionalities - Whether judge erred in finding that second respondent did not use specifications and information supplied by appellant to write programme - Whether there was no evidence that first respondent used appellant's business plan - Breach of contract and inducing breach - Breach of confidence - Weight of evidence - Principles to be applied - Whether judge adequately dealt with all evidence to support implication of terms in agreement between appellant, respondent and second respondent that appellant would own copyright in computer programme - Whether judge restricted claim only of commissioning of second respondent to carry out assignment - Whether principles on which learned judge relied are applicable to case

Mrs Denise Kitson QC and Mrs Trudy-Ann Dixon Frith instructed by Grant Stewart Phillips & Company for the appellant

Michael Hylton QC, and Courtney Bailey instructed by DunnCox for the first respondent

Vincent Chen and Ms Sylvan Edwards instructed by Chen Green & Co for the second respondent

Harris JA

Introduction

1 This is an appeal against the decision of Jones J contained in a judgment delivered on 30 April 2010 in which he gave judgment for the first and second respondents on the issue of liability with costs and for the second respondent on his counterclaim with costs. The details of the order appealed are as follows:

• “1. Judgment for the — ^st and — ^nd Defendants on the claim on the issue of liability with costs to be agreed or taxed.

• 2. Judgment for the — ^nd Defendant on the counterclaim with costs. Damages to be assessed at a date to be fixed by the Registrar of the Supreme Court.

• 3. There be an enquiry into damages consequent on the Claimant's undertaking given to the court on the granting of the interim injunction in this matter. This enquiry is to be fixed on a date to be set by the Registrar of the Supreme Court.

• 4. A stay of these Orders is granted for 6 weeks from the date hereof.”

Background facts

2 The appellant, Paymaster is a limited liability company duly incorporated under the Companies Act of Jamaica. It is in the business of providing bill payment services and operates a fully computerized multiple client collections and bill payment service at various branches island wide. The first respondent (hereinafter referred to as GKRS) is a limited liability company duly incorporated under the Companies Act and carries on, inter alia, the business of foreign exchange trading. It also operates a money transfer service and a bill payment service. The second respondent was at all material times a computer programmer, contracted to the appellant under a consultancy contract as its technical consultant.

3 In 1983 Paul Lowe (hereinafter referred to as “the second respondent”) and his partner William Ingram formed Complete Systems Services Ltd (CSS) and developed a cashiering program which collects payments for a single company directly. They named it CSSREMIT.

4 Between 1983 and 1992 CSS promoted/marketed CSSREMIT to various companies to assist in their collection needs. CSSREMIT is licensed to the Collector of Taxes, Norman Manley Airport, Jamaica Public Service Company Limited, Income Tax Department and the Stamp Commissioner. In the latter part of the 1980's, the second respondent bought out the shares of William Ingram and in 1992, CSS ceased operating while the second respondent continued with the promotion, marketing and licensing of CSSREMIT.

5 Sometime in 1994, Ms Audrey Marks, while resident both in Jamaica and in the United States of America, conceptualized the Paymaster multi-payment agency system. Ms Marks returned to Jamaica with the concept and in November 1994, Paymaster, through her as director, consulted with Dr Maurice McNaughton and retained his company, Jamaica Online Information Services Ltd (hereinafter referred to as “JOL”) to provide consultancy services for the purpose of developing a software package – a multi-payment agency payment system to deliver the services that she wanted.

6 In February 1995, Dr McNaughton prepared a document called “Paymaster Collections Network: Architecture and Operations” for Paymaster. This document specified the structure and operations of the Paymaster's collections network; the software components and the underlying hardware to meet the requirements. Dr McNaughton recommended to Ms Marks the use of the second respondent's CSSREMIT software as a suitable foundation on which to develop “the branch and front end aspects” of Paymaster's operations. Dr McNaughton subsequently recommended that the second respondent be commissioned to write the computer programme, in accordance with the specifications provided by him (Dr McNaughton). The second respondent was subsequently engaged to do so. Upon the completion of the second respondent's assignment his CSSREMIT was licensed to Paymaster for a price of $300,000.00.

7 In June 1995, work on the Paymaster multi-payment software was suspended while awaiting a feedback from the utility companies. In early 1996, Paymaster rented its first store location where Miss Marks demonstrated the Paymaster multi-payment system to the utility companies. Paymaster received positive response from the utility companies. Ms Marks then entered into discussions with GKRS with a view to having a Western Union sub-agency installed at that location. Following this, she invited GKRS to invest in the Paymaster project. Paymaster supplied its managing director, Brian Goldson with a copy of Paymaster's business plan which included the Paymaster Collection Network Architecture and Operations Plan.

8 In or around September 1996, the second respondent adapted and customized his CSSREMIT programme to Paymaster's specifications. However, some problems were encountered. It became apparent that further work needed to be done on the head office software and two additional modules were to be written by the second respondent to solve the problems. After the completion of the additional work, Paymaster began testing its multi-payment system in October 1996 but the testing was halted in September 1997 due to the utility companies' withdrawal from it as well as Dr McNaughton's withdrawal from the project. Thereafter, Paymaster assigned the second respondent the task of completing the development of the software. In the following month, Paymaster entered into a contract with Jamaica Public Service Company Ltd (“JPS”) with respect to the use of its multi-payment system. By March 1998, Paymaster expanded its services to 10 branches/locations and in April entered into contract with Cable and Wireless (Jamaica) Ltd. During this time, however, Paymaster had to embark on a process of testing and debugging the system and meeting the costs occasioned thereby.

9 In October 1998, the final version of the multi-payment software as well as a payment system for the Paymaster multi-payment software was delivered by the second respondent. Paymaster expressed its satisfaction with the product as it met the specifications required for its multi-client operations.

10 It was Ms Marks' evidence that the second respondent, although already engaged in a contract with Paymaster, requested a separate software maintenance contract and upon Paymaster's refusal in acceding to the request, he disconnected the Paymaster multi-payment software programme. She further stated that after months of discussions, an agreement was subsequently reached in February 1999 between Paymaster and the second respondent, in which the second respondent was given a maintenance service agreement by which he would be paid on each pay day of each month and would be required to attend all Paymaster's internal and external meetings.

11 Ms Marks stated that on 4 October 1999, the second respondent licensed his CSSREMIT Front End Cash Remittance Programme to GKRS, sent the Paymaster multi-payment software programme and manual to GKRS and subsequently licensed the Paymaster multi-payment software to GKRS, which used the programme to start Bill Express as a competitor of Paymaster. A month after obtaining the license from the second respondent, she said that GKRS commenced entering into contracts with utility companies for bill collection and began marketing operations.

12 Being aggrieved by the steps taken by GKRS, Paymaster, in August 2000 instituted proceedings against GKRS and the second respondent, claiming against them jointly and/or severally damages for:

• 1. Breach of copyright.

• 2. Breach of confidence.

• 3. Passing off.

• 4. Breach of contract and inducing breach of contract.

13 Paymaster claims copyright in the CSSREMIT/Paymaster multi-payment software head office programme. It claimed to have designed the architecture, provided the specifications and contracted the second respondent to write the software from the specifications. In paragraphs 3, 4, 5, and 6 of its statement of claim it averred as follows:

“3. The Second Defendant was at all material times a computer programmer who was contracted to...