Canada: ISP TekSavvy Ordered To Turn Over Names And Addresses Of 2,000 Alleged Copyright Infringers (Intellectual Property Weekly Abstracts Bulletin - 24 February 2014)

Last Updated: February 28 2014
Article by Chantal Saunders, Beverley Moore, Adrian J. Howard and Ryan Steeves

Most Read Contributor in Canada, September 2016

Copyright Decisions

ISP TekSavvy ordered to turn over names and addresses of 2,000 alleged copyright infringers

Voltage Pictures LLC v. John Doe and Jane Doe, 2014 FC 161

The Court framed the issues on this motion as whether a person who downloads copyrighted material has a right to not have their contact information revealed to the copyright holder, and if they are infringing copyright what remedy, if any, should the court impose. In brief, Voltage is seeking the names and addresses of 2,000 ISP subscribers who allegedly downloaded Voltage's films, including The Hurt Locker. The intervener CIPPIC alleged Voltage was a copyright troll seeking to intimidate individuals into easy settlements by way of demand letters and threats of litigation. The ISP TekSavvy took no position on the motion.

The Court held that Voltage demonstrated a bona fide case of copyright infringement, and therefore a Norwich order requiring TekSavvy to release the names of the ISP subscribers was granted. A major issue revolved around whether Voltage needed to show a prima facie case, or a bona fide case. In the end, the Court followed an earlier Court of Appeal decision, holding the plaintiff to only show a bona fide case, which it did as alleged in the Statement of Claim.

In making the Norwich order, the Court imposed conditions to employ safeguards used in the U.K. and U.S. for the interests of the internet users. The Court provided language that must appear in any demand letter Voltage sends to the ISP subscribers, and the demand letter will need to be provided to the Court for review before being sent. The proceeding will also be case managed.

NOC Proceedings

Principles of Comity Should Not Override Fairnes

Valeant Canada LP v. Cobalt Pharmaceuticals Company, 2013 FC 1254

Drug: diltiazem

Cobalt brought a motion pursuant to s. 6(5) of the NOC Regulations, to dismiss the proceeding as an abuse of process. The Court dismissed the motion with costs to Valeant.

Two patents are at issue in the underlying NOC proceeding, but only one is the subject of the within motion. That patent had been the subject of a proceeding between Valeant's corporate predecessor and a different generic company. The Valeant company was unsuccessful in the application on the basis of non-infringement, and the appeal was dismissed as moot (decisions here and here). Cobalt is arguing non-infringement on the same basis as the finding in the previous proceeding.

The Court held that the "blind application of the principle of consistency should not and cannot override fairness." The Court then held that it is not appropriate on a motion regarding abuse of process to conduct a full assessment of the previous decision to determine whether an exception to judicial comity is warranted. In addition, the Court held that launching an infringement action cannot be the only method by which a patentee can challenge another interpretation of the claims from a previous NOC proceeding. The Court held that Valeant was not engaging in an abuse of process, and even if abuse had been found, the Court would have exercised its discretion to allow the proceeding to continue.

Trade-Mark Decisions

Appeal of TM Opposition Board's Split Decision Dismissed

SK Corporation v. Safety-Kleen Systems, Inc., 2014 FC 140

This was an appeal of a decision of the Trade-marks Opposition Board (the "Board") by SK Corporation ("SK Corp."). The Board rendered a split decision in which SK Corp.'s trade-mark application was rejected with respect to certain wares and "undefined" wares that overlapped with those of the Respondent, Safety-Kleen Systems ("SKS"). The application was allowed with respect to other non-overlapping wares and the services covered by the application.

SK Corp.'s application covered a broad range of chemical products, as well as cable television broadcasting and cellular communications services. In assessing the likelihood of confusion between the two trade-marks, the Registrar found that while both have some degree of distinctiveness, SKS's mark has been in use for much longer and, as such, this criterion favours SKS. The Board also concluded that there was no overlap between SK Corp.'s services and SKS's wares. However, there was an overlap between some of the parties' wares. There were also certain wares that the Board did not understand because of their technical or chemical terms. They too were considered to be overlapping. With respect to the degree of resemblance between the trade-marks, the Board concluded that they were identical phonetically, but shared no visual resemblance. SK Corp. appealed and requested that the Board's decision regarding the overlapping and undefined wares be set aside.

SK Corp. filed four additional affidavits on appeal. The Court considered the evidence, and found that the new evidence was not sufficiently significant or reliable in light of the whole evidence, and would not have materially affected the Board's decision. Therefore, applying a 'reasonableness' standard of review, the Court found that the Board considered all relevant factors and came to a reasonable conclusion. The appeal was dismissed with costs.

Other Industry News

CIPO announced that amendments to the Trade-marks Regulations and the Patent Rules are coming into force on April 1, 2014. Several regulatory changes were highlighted in CIPO's announcement, including:

  • Recognition of up to 12 months of practical experience for persons who are entitled to practice before the trade-marks or patent office of another country
  • Application of a uniform set of requirements so that anyone seeking to have their name entered, or reinstated, on the list of trade-mark agents must first have passed the qualifying examination
  • Removal of the name of an agent from the respective list or register of agents if the agent fails to pay the renewal fee within the prescribed time or if the agent no longer meets the requirements by which their name was entered on the list or register
  • Elimination of the requirement for the Office to issue a notice requiring compliance prior to removing a name from the respective list or register of agents

More information can be found on CIPO's website.

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