Canada: Nine Copyright Infringement Cases Remain Stayed While A Tenth Proceeds To Trial To Decide The Common Issues (Intellectual Property Weekly Abstracts Bulletin — Week Of August 22)

Copyright Decisions

Nine copyright infringement cases remain stayed while a tenth proceeds to trial to decide the common issues
1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2016 FC 719

The Federal Court has upheld a case management Prothonotary's decision staying nine of ten actions by the same plaintiff, Blacklock's Reporter, finding that moving forward on a single action was the option that best achieved the interests of justice and the just, most expeditious and least expensive determination of the issues in dispute.

As described by the Court, Blacklock is a subscription-based news corporation that covers politics, bills and regulations, reports and committees, as well as the Federal Court and public accounts in Canada. Blacklock alleges that the Defendants have unlawfully distributed its articles within their respective departments or agencies and have breached its copyright after having obtained the articles by way of single-use subscriptions or through third-party sources.

The Court noted the following common defences in the ten proceedings: whether Blacklock owns the copyright in the articles alleged to have been infringed; the novel defence of abuse of copyright; the defence of fair dealing when articles are copied/used for internal government reporting purposes; the proper assessment of damages (whether they be loss of profit apportioned per article or the value of an institutional licence); and the availability of punitive damages.

The Prothonotary had concluded that it was in the interests of justice to stay the nine actions given that 1) the issues raised by the various actions significantly overlapped, 2) a stay would avoid costly duplication of judicial and legal resources, 3) a real risk of contradictory decisions existed, 4) Blacklock would not suffer prejudice, and 5) proceeding with the ten actions would cause prejudice to the Defendants.

On appeal, the Federal Court agreed with this decision and dismissed the appeal. Nine of the proceedings remain stayed and the tenth is scheduled to be heard in September 2016.

In a proposed class proceeding, the Federal Court has ordered the disclosure of the name and address of an internet subscriber who allegedly has been file sharing copyrighted material
Voltage Pictures, LLC v. John Doe, 2016 FC 881

The Federal Court has ordered Rogers Communications Inc., as an internet service provider, to disclose to the Applicants any and all contact and personal information for a Rogers customer associated with an identified internet protocol address.

In the underlying proceeding, the Applicants to this proposed class action have claimed declatory and injunctive relief against the John Doe Respondent Subscriber who is only known by his or her IP address. The Applicants have alleged that the Subscriber and others have engaged in illegal file sharing over the Internet, and thereby infringed the Applicants' copyrights in several films.

In balancing the privacy rights of the Subscriber, the Court ordered that Rogers must disclose to the Applicants only the Subscriber's name and address as recorded in its records. This information was also not allowed to be disclosed to any other parties or the general public before the Subscriber's identity becomes part of the public record of the proceeding.

The Court awarded Rogers an hourly fee of $100 plus tax for the time spent in assembling and providing the Subscriber information to the Applicants, as well as Rogers' costs of the motion.

Trademark Decisions

Application for declaration of infringement dismissed
Wenger S.A. v. Travel Way Group International Inc., 2016 FC 347

Wenger brought an application seeking, inter alia, a declaration of infringement and expungement of certain of Travelway's trademarks. The Court dismissed the application.

On the question of confusion, the Court confirmed the jurisprudence and held that the level of resemblance between the two marks is similar enough to warrant further consideration. However, the Court held that consumers are not likely to know the Wenger Cross Logo as originating from one source. The Court gave no weight to the survey proffered to evidence likelihood of confusion, as it was introduced in the affidavit of a person who neither conducted the interviews nor designed the survey. Furthermore, the Court was not satisfied that mistakes made in retail advertising and anecdotal evidence were not sufficient evidence of actual confusion. Thus, the Court held that Travelway's use of the marks is not likely to confuse the consumer. Furthermore, there was no passing off and no damages. 

Finally, Travelway's marks were held to be registered and valid. The onus of proving otherwise was on Wenger and they did not meet it.

Appeal from an opposition dismissed — new evidence would not have affected Registrar's decision
L'Oréal v. Cosmética Cabinas, S.L, 2016 FC 680

In this case, L'Oreal appealed the decision of the Registrar of Trademarks allowing Cabinas' opposition to the mark INOA. L'Oreal filed further evidence on appeal. Cabinas did not respond to that further evidence. The Registrar held that Cabinas had met its burden of proving prior use of AINHOA and that L'Oreal had not met its burden of proving that there was no likelihood of confusion. The Federal Court dismissed the appeal.

The Court held that L'Oreal's new evidence on prior use would not have materially affected the Registrar's findings on that point. Furthermore, the Court held that it would only intervene on the question of prior use if the Registrar's decision was clearly wrong, as it was a question of mixed fact and law. The Court considered the case law, and held that the Registrar's decision was reasonable. Furthermore, reliance on concepts from passing off cases was held to be of no help to L'Oreal.

L'Oreal tried to argue that Cabinas' use of the trademark cannot be considered to be in the normal course of trade because the products were in violation of Canadian cosmetic regulations. However, the Court did not accept this argument, holding that in the absence of clear evidence, the Registrar does not have the jurisdiction to find the use of a trademark to be unlawful in an opposition proceeding, particularly where the matter was within the jurisdiction of another decision maker. There was no such evidence here.

With respect to the issue regarding likelihood of confusion, the Court also held that L'Oreal's new evidence would not have affected the Registrar's decision. Furthermore, L'Oreal reargued many of its positions from before the Registrar. In addition, the Court did not accept that the new evidence that INOA stands for "Innovation No Ammonia" is a coined word suggesting distinctiveness. The Court held that the Registrar's decision on confusion was reasonable. The Court also refused to draw an adverse inference due to Cabinas not filing evidence in response on this appeal. Cabinas had met its burden before the Registrar, and in this appeal, the onus was on L'Oreal.

Other Cases of Interest

Court declares Minister's decision restricting importation of drugs from two of Apotex's drug manufacturing facilities in India unlawful
Apotex Inc. v. Canada (Health), 2016 FC 673

Apotex et al. brought a judicial review (JR) of the Minister of Health's August 2015 decision that varied the terms and conditions of Apotex's Drug Establishment Licences in respect of its two facilities in India, such that products produced after June 2015 were subject to various additional testing and reporting requirements.

This is the second JR involving a decision of the Minister restricting importation of drugs from two of Apotex's drug manufacturing facilities. Our summary of the first JR can be found here.

Following the first JR decision, which quashed the Minister's 2014 Import Ban, the Minister issued a decision removing all terms and conditions on Apotex's establishment licences for the two facilities. Consequently, the Respondents' requested the dismissal of the second JR for mootness. While the Court was satisfied that the JR was moot, the Court decided that it ought to hear it upon considering the three factors set out by in Borowski v Canada (Attorney General), [1989] 1 SCR 342, namely: (a) the presence of an adversarial context; (b) judicial economy; and (c) the need for the Court to be sensitive to its role as the adjudicative branch of government.

The issue before the Court was whether the August 2015 Decision was unlawful on the basis that the amendment, in effect, sustained a decision quashed by this Court by maintaining in part, the 2014 Terms and Conditions in the 2015 Terms and Conditions. The applicable standard of review was correctness.

The Court noted that the lawfulness of the August 2015 Decision would depend upon:

(i) whether it is a sufficiently independent decision from the 2014 Import Ban, and

(ii) whether it could nonetheless be justified in the evidence, such that the Minister's improper purpose in imposing the Import Ban did not also taint this subsequent and related decision.

The August 2015 Decision was not implemented as, nor intended to be, a new and independent decision from the 2014 Import Ban. Further, the Court found that there was a lack of evidence before the Minister that supported any reasonable belief an Import Ban was necessary in August of 2015.

The Court also noted that while the first JR found that the 2014 Import Ban was motivated by a purpose falling outside the Minister's delegated authority, this did not, in these circumstances, render it automatically void. Rather, the Court found that there was simply no evidence supporting any asserted basis for implementing or maintaining the Import Ban so as to support a finding that the 2015 Decision was justified or sufficiently separate from the 2014 Import Ban. The Court granted the JR and declared that the August 2015 Decision was unlawful.

Cases Pursuant to S. 8 of the NOC Regulations

Claims under Section 8 of the NOC Regulations and under Ashby v. White struck in Ontario Court
Apotex Inc. v Pfizer Ireland Pharmaceuticals et al., 2016 ONSC 4966

In the Ontario Court, Apotex claimed damages pursuant to, inter alia , section 8 of the NOC Regulations. Pfizer brought a motion to strike out parts of Apotex' statement of claim, except for its claim for treble damages under the Statutes of Monopolies. The motion was mainly dismissed.

In the underlying proceeding, Pfizer's application for prohibition of the 446 Patent was wholly successful. On appeal, the 446 Patent was subsequently declared invalid by the Supreme Court of Canada. I n its motion to strike, Pfizer argued that section 8 does not apply since the prohibition proceeding was not withdrawn, discontinued or dismissed, nor was it reversed on appeal. The Court agreed that the subsequent finding of invalidity does not give rise to a claim by Apotex under section 8 of the PMNOC Regulations. Thus, it struck this claim.

Pfizer also moved to strike Apotex's claim pursuant to the Trade-marks Act on the basis that it conflicts with the PMNOC Regulations. Pfizer argued that the Court should apply the principle of the presumption of coherence and, if need be, resolve the conflict by giving precedence to the PMNOC Regulations. The Court held that there was a live issue as to whether subordinate legislation such as the PMNOC Regulations could oust the statutory remedies in the Trade-marks Act merely because the PMNOC Regulations contain a limited remedy for damages suffered by a generic manufacturer as a result of the Prohibition Proceeding. Thus, Apotex's claim under Trade-marks Act was not struck.

Pfizer also tried to strike the pleadings regarding unjust enrichment. In a recent Court of Appeal case, Apotex's claims for unjust enrichment had been struck because the pleading failed to assert a proper deprivation. The Court found that Apotex's pleading in this case was significantly different in that it claimed only that portion of Pfizer's revenues that represent the revenues Apotex was deprived of because of the delay in obtaining its Notice of Compliance. As a result, the claim for unjust enrichment was not struck.

Pfizer also asserted that Apotex claims for nuisance must fail because Apotex failed to plead an element of private nuisance, namely that there be an interference with exclusive property rights, and failed to plead the requisite elements of public nuisance. The Court held that, while unusual, it could not be said at this stage that Apotex's claim for nuisance disclosed no reasonable cause of action. However, the Court did strike Apotex's claims based on Ashby v. White, to the extent that they asserted an independent cause of action.

Finally, the Court found that it was not plain and obvious that Apotex's claim for conspiracy was doomed to fail. Thus, the claim was not struck.

Other Industry News

Patented Medicine Prices Review Board (PMPRB) tabled the 2015 Annual Report of the PMPRB with the Clerks of the House of Commons and the Senate on August 17, 2016. The 2015 Annual Report showed, among other things, a record increase in patented medicine sales in Canada, while pharmaceutical R&D investment remains at historic lows.

A quick summary of the Report can be found here and a copy of the Annual Report 2015 can be found here .

About BLG

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
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).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions