Canada: Court Awards $6.5 Million For Plaintiffs' Costs Following Successful Infringement Action (Intellectual Property Weekly Abstracts Bulletin — Week Of December 12)

PATENT DECISIONS

Court awards $6.5 million for plaintiffs' costs following successful infringement action

Dow Chemical Company v. Nova Chemicals Corporation, 2016 FC 91

The Court awarded the Plaintiffs a lump sum payment of $6.5 million for their costs in this case. The amount consisted of $2.9 million for legal fees and $3.6 million for the Plaintiffs' reasonable and necessary disbursements. In the underlying proceeding, the Plaintiffs were granted a declaration that the Defendant had infringed Canadian Patent No. 2,160,705 (2014 FC 844). There was no dispute that it was a most complex case with many complicated concepts and issues.

The Plaintiffs' submissions showed that Dow's actual total legal costs were $9.6 million. The submissions also stated that should the Plaintiffs' fees be assessed under Column V of Tariff B, their costs would only amount to $1,099,725, which was 11% of the Plaintiffs' total legal costs. The Court noted that costs pursuant to Column V of Tariff B would be totally inadequate in this case; it was not acceptable to only recoup 11% of one's costs in such a complex case.

After considering the submissions of both parties and the jurisprudence of this Court, the Court held that a lump sum award for costs was appropriate in this case. The Court found that the Plaintiffs' lump sum of $2.9 million for their costs for legal fees to be a reasonable amount. The Court was also satisfied that the disbursements were reasonable.

COPYRIGHT DECISIONS

Motion to amend Statement of Claim and motion for summary judgment allowed in part in copyright action

Davydiuk v. Internet Archive Canada and Internet Archive, 2016 FC 1313

In the within action for copyright infringement, the Plaintiff claims to be the owner of the copyright in certain cinematographic works and unfixed performances described in his original Statement of Claim. The Defendant, Internet Archive, is a California-based non-profit digital library that operates a service called the Wayback Machine, which preserves publicly available internet sites in a free, searchable archive. The Plaintiff had requested that certain webpages be removed or excluded from their archive. The Defendants advised him that the identified material had been taken down from their websites and removed from their collections. In 2011, the Plaintiff discovered that the Defendants were running a new version of one of its archiving websites with the works at issue and commenced this infringement action.

The Plaintiff brought this motion to amend his Claim to add express references to a claim for ownership of the copyright in photographs, images and audiovisual recordings created in the production of these works and performances. The Defendants brought a motion for summary judgment. The Court allowed the Plaintiff's motion as it related to the works, but not the performances, and the Defendants' motion as it related to the performances, but not the works.

On the motion to amend, the Court found that it was not plain and obvious that the proposed amendments would fail, nor would the proposed amendments cause prejudice to the Defendants that could not be compensated with costs. At the Plaintiff's request, the Defendants had deleted the webpages at issue in reliance on the pleadings as originally framed. The Defendants claimed that this had resulted in a loss of evidence relevant to its defence of the action. The Court noted that the evidence did not establish that the webpages could not be recovered. The Court was also reluctant to conclude that the Defendants could rely on the Plaintiff's request as a basis for eliminating evidence relevant to the issues in this litigation, particularly after the litigation has commenced. The Court was satisfied that the Defendants had not established prejudice resulting from the proposed amendment that should preclude the Court from granting the requested leave.

On the motion for summary judgment, the Court disagreed with the Defendants' three reasons for why there was no genuine issue for trial. First, the Court saw no basis either in law or logic to conclude that production of a copy of the original work is an absolute prerequisite to success in establishing either subsistence of copyright in the work or that a reproduction of the work represents a sufficiently substantial reproduction to constitute infringement.

The Court reached the same conclusion in respect of the Defendants' submission that without being able to show the Court an original copyrighted work, the Plaintiff could not adduce evidence necessary to conduct the comparative analysis to show that the Defendants had reproduced the works in whole or substantial part.

Third, the Court dismissed the Defendants' argument that the photographs and still images (which are the allegedly infringing reproductions) were not capable of amounting to a "substantial" reproduction of the videos for which the Plaintiff claims copyright protection. This analysis would require a qualitative assessment comparing the copyrighted work with the allegedly infringing work. Moreover, the Court noted that the analysis was highly dependent upon the facts of each individual case, which precluded a finding as a matter of law in this summary judgment motion that photographs and still images were incapable of infringing the copyright in a cinematographic work.

TRADEMARK DECISIONS

Original decision finding that the DOMAINE PINNACLE word and design mark is not confusing with the registered PINNACLES mark is restored on appeal

Domaines Pinnacle Inc. v. Constellation Brands Inc., 2016 FCA 302

The Federal Court of Appeal has restored a decision of the Register of Trademarks (2013 TMOB 153) that held that an application for a word and design mark for DOMAINE PINNACLE is unlikely to cause confusion with the registered mark PINNACLES.

Domaines Pinnacle had sought to register the word and design mark DOMAINE PINNACLE in relation with the sale of apple-based alcoholic and non-alcoholic beverages and other apple products. The Constellation respondents opposed, arguing it would be confusing with its own registered PINNACLES mark in relation with the sale of (grape) wine.

The Trademarks Opposition Board ("TMOB") held that confusion was unlikely to occur. The Federal Court, on judicial review, determined that the Board had erred in not considering the potential uses that the respondents might have made of their registered mark, as required by Masterpiece and Pizzaiolo. That Federal Court decision (2015 FC 1083) was now found to have been made on a correctness standard, which it was not entitled to do.

The Court of Appeal looked at the original TMOB decision on the reasonableness standard and held that the full scope of the rights granted for the registered PINNACLES mark would not permit them to use the distinctive graphic elements — the apple and snowflake design — that the Board identified as being central to the distinctiveness of the appellant's mark. (A distinction was also drawn between apple-based and grape-based beverages.)

The Court of Appeal noted that "Pinnacle" was a commonly used term with little distinctiveness. Therefore, the Court of Appeal held that the design context must play a greater role in distinguishing the respondents' mark from the numerous other registered marks in Canada that feature the word "Pinnacle".

As a result, the original decision of the TMOB was restored by dismissing the appeal to the Federal Court.

NOC DECISIONS

Motion to Dismiss NOC Proceeding Granted — Non-Infringement as an Abuse of Process

Valeant Canada LP v. Apotex Inc., 2016 FC 1359

Apotex's motion to dismiss Valeant's NOC Proceeding pursuant to s. 6(5)(b) of the NOC Regulations was granted with costs.

Apotex's NOA alleged non-infringement. It then advised Valeant it would be bringing the within motion. Valeant did not set a schedule in the main application, however, it engaged on the motion. Apotex filed the evidence of a law clerk, of an Apotex employee describing the contents of Apotex's ANDS for its tablets, and of an expert witness who testified as to non-infringement. Valeant filed no evidence on the motion, and did not cross-examine Apotex's witnesses. It also did not file evidence on the merits before the motion was heard.

The Court held that Apotex has provided to Valeant, each and every document requested. Furthermore, the Court held that the evidence demonstrated that Apotex's tablets do not contain the essential elements of the patent at issue. The Court also held that Valeant's allegation of non-infringement was simply a bald allegation.

The Court held that Valeant made a calculated, strategic decision not to file evidence, and must live with the consequences. In addition, as the bald statement in the application does not set out any grounds to support the infringement allegation, it is on its face, bereft of any chance of success, and should be struck. The Court held that Apotex's burden on the motion is not as high as Valeant argued, and if the application contained any information from which it could be reasonably inferred that there was some substance to the infringement allegation, the application would not be bereft of any chance of success. Valeant's right to a hearing on the merits is a qualified right. There needs to be merit to the application. Thus, the application was struck.

INDUSTRY NEWS

Health Canada has revised Part I: Health Professional Information, and Part II: Scientific Information — Guidance Document: Product Monograph and the five associated templates for prescription products.

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 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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.