In Adobe Systems Incorporated, Microsoft Corporation and Rosetta
Stone Ltd. v. Dale Thompson, the Federal Court recently took
another significant step in addressing the problem of sale of
pirated software in Canada. Pursuant to the summary judgment rules
of the Court, Justice Campbell granted summary judgment, including
broad injunctive relief, maximum statutory damages, punitive
damages and costs. In two precedent setting findings, maximum
statutory damages were awarded despite the fact that there was no
showing of recidivism and the Court awarded damages in respect of
unauthorized reproduction and display of cover art on the
Defendant's websites. The Plaintiffs were successfully
Brian P. Isaac and
Vik G. Tenekjian of our Toronto office.
The case is significant since it is another case where the
Federal Court has shown that they are willing to address the need
for cost-effective litigation and significant penalties in order to
deter intellectual property crime in Canada. In the case at hand,
Justice Campbell stated that he found "that the
Defendant's infringing conduct, and his response to being held
accountable for this conduct, is particularly egregious and
requires a clear deterrent message to the Defendant, and anyone
else of like mind."
The Plaintiffs had commenced an action against the Defendant for
sale of pirated copies of their well-known and successful software
programs. The Defendant filed a Statement of Defence making it
clear that he was not acknowledging any wrongdoing through the sale
of pirated software. The evidence established that the Defendant
had clearly sold pirated copies of software of each of the
Plaintiffs and that he was displaying cover art from the
Plaintiffs' products on his websites.
The Plaintiffs brought a motion for summary judgment. The
Defendant did not respond and did not attend at the hearing.
Following on recent cases where significant remedies including
significant damage awards have been granted against recidivist IP
criminals, this most recent case has recognized the ability to
utilize maximum statutory damages, punitive damages and solicitor
and client costs awards in order to deter IP crime even in cases
where no recidivism has been shown. Further, the finding of
infringement of copyright in cover art used on the software
products in issue, and an award of maximum statutory damages in
respect of the reproduction and display on websites of that art,
provides precedent for a straightforward cause of action against
any pirate reproducing and using product packaging artwork in
trying to sell counterfeit and pirated products online.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).