Intellectual Property Law

The court granted an extension of an interim interlocutory and mandatory order restraining the transfer, access, and use of the internet domain "ditlabs.io" pending the outcome of the action.

The decision addresses the requirements for a Mareva injunction, including the presence of a strong prima facie case, irreparable harm, and the balance of convenience.

The court found that KNNX Corp. had established a strong prima facie case that it was the rightful owner of the domain, that there was a risk of irreparable harm if the injunction was not extended, and that the balance of convenience favoured the plaintiff.

The order was granted to preserve the status quo and prevent dissipation of the domain asset.

The defendant, Hantover Canada Inc., brought a motion for a permanent stay of proceedings or, alternatively, to strike the plaintiff's Amended Statement of Claim.

Hantover argued the action was an abuse of process and a duplicate of another ongoing action (the "Desiccare Action") involving similar factual allegations and claims.

The plaintiff, Guarav Tewari, argued the actions were distinct.

The court found substantial overlap in factual background and issues, concluding the Hantover Action was an abuse of process.

The court also found that the Amended Claim disclosed no reasonable causes of action for breach of contract, trade secret violation, fraudulent inducement, fraud, breach of fiduciary duty, or anti-trust/anti-competitiveness, as the plaintiff failed to plead material facts establishing a direct relationship or binding agreement with Hantover.

Leave to amend was denied as no viable claim against Hantover was possible and an unjust enrichment claim would likely be statute-barred.

The court ordered the claim permanently stayed.

The action involved alleged breaches of agreements.

The defendants moved to dismiss or permanently stay the proceeding for lack of jurisdiction and on forum non conveniens grounds, and to strike the statement of claim.

The plaintiff cross-moved for default judgment.

The court set aside the noting in default for most defendants and service for two, staying the action against those two.

However, the court found jurisdiction over the main defendants based on presumptive connecting factors and a valid forum selection clause, dismissing their motion to stay.

The court largely upheld the statement of claim, striking only two paragraphs, but ordered the plaintiff to add the contracting corporation as a proper plaintiff, staying the action until then.

This endorsement addresses two motions in a complex litigation involving allegations of misappropriation of confidential information and trademark infringement.

The first motion, brought by the plaintiffs, sought further document production from the defendants and leave to amend the claim.

The second motion, brought by certain defendants, sought forensic examination of specific electronic documents and production of network access records from the plaintiffs, and also proposed bifurcation of a key issue.

The court ordered reciprocal production of relevant confidential business documents under a protective order, denied bifurcation due to lack of consent, ordered the plaintiffs to undertake a forensic search for disputed electronic documents and produce network access records, and largely granted the motion to amend the claim, with the exception of a plea to pierce the corporate veil.

This appeal concerned an insurer's duty to defend where the insurer alleged material misrepresentations and breach of policy conditions by the insured.

The insurer, Certain Underwriters at Lloyd's, London, denied defence to IT Haven Inc. and Ryan Hunt against a copyright infringement lawsuit, claiming the insured misrepresented their business operations in the insurance application.

The motion judge granted the duty to defend, refusing to consider extrinsic evidence.

The Court of Appeal dismissed the insurer's appeal, affirming the duty to defend.

The court applied a flexible approach, distinguishing this from a typical 'pleadings rule' case, and held that resolving the alleged misrepresentations would require determining contested factual issues central to the underlying litigation, which is inappropriate at the duty to defend stage.

The Court of Appeal for Ontario reversed a motion judge's decision that a debt arising from misappropriation of trade secrets would survive bankruptcy under s. 178(1)(e) of the Bankruptcy and Insolvency Act (BIA).

The motion judge erred by interpreting "false pretences" too broadly, including lying during discovery and generally morally objectionable conduct, rather than requiring a deceitful statement by which the debtor obtained property or services.

The Court clarified that s. 178(1)(e) requires a direct causal link between a deceitful statement and the obtaining of property/services.

The appeal was allowed, setting aside the declaration regarding s. 178(1)(e) and varying the stay of proceedings to allow quantification of claims for bankruptcy purposes and enforcement of injunctive relief, but not monetary judgments outside of bankruptcy.

The defendants sought to schedule a further motion for summary judgment on the Monopolies Act issue, having previously failed on a Rule 21 motion concerning the same claim.

The court denied the request, emphasizing that partial summary judgment is rarely appropriate in complex litigation, especially when recent amendments to pleadings have re-opened other significant issues, such as patent validity.

The judge concluded that the case should proceed to a single trial on all issues to avoid fragmented litigation and multiple appeals, which would prolong the proceedings and consume vast judicial resources.

The appellants (Sanofi-Aventis and Schering Corporation) appealed a motion judge's decision dismissing their motion to amend their statement of defence.

The appellants sought to plead that a 2009 Federal Court decision invalidating their patent for the drug Ramipril was based on wrong legal principles, specifically the "promise doctrine," which was subsequently struck down by the Supreme Court of Canada in 2017.

The motion judge had dismissed the motion on the basis of issue estoppel, finding no change in law justified departing from the doctrine.

The Court of Appeal allowed the appeal, holding that the Supreme Court's decision striking down the promise doctrine constituted a change in law that warranted exercising discretion not to apply issue estoppel, particularly given the centrality of the patent validity issue to the respondent's claim for damages.

The plaintiff, Car-Wal Garage Doors Inc., brought a motion for an interlocutory injunction to restrain the defendant, On Track Door Systems Canada Inc., from using the trade name "On Track" and the domain name "ontrackdoorsystems.ca".

The plaintiff alleged the defendant's actions constituted passing off, causing confusion and damaging goodwill, particularly after the expiry of a previous licence agreement.

The defendant cross-moved to strike the claim, arguing res judicata or abuse of process.

The court applied the three-part test for interlocutory injunctions, finding a serious issue to be tried regarding passing off, a risk of irreparable harm to the plaintiff's goodwill and market share, and that the balance of convenience favoured the plaintiff.

A limited injunction was granted, restraining the defendant from using "On Track" in its name except for "On Track Door Systems Grey Bruce Inc." and from using the specified domain name.

The Moving Parties (Fuego Digital Media Inc., ProtocollS Inc., Fuego Digital Media QSTP-LLC, Karl Gretton, and Kevin Higgins) brought a motion to dismiss the action against them, arguing it was statute-barred, res judicata, or an abuse of process.

The Plaintiff (DAC Group (Holdings) Limited) brought a cross-motion to amend its claim to add Patricia Ruth Higgins as a party for a fraudulent conveyance claim and to seek a Certificate of Pending Litigation (CPL).

The court dismissed the Moving Parties' motion, finding that the claims were not plainly and obviously statute-barred, issue estoppel did not apply to the non-arbitration parties, and abuse of process was not clear at this stage.

The court granted DAC's cross-motion to add Patricia Ruth Higgins and permit a CPL, as Higgins and his wife consented.

Appeal from a summary judgment decision enforcing settlement agreements between Mars Canada Inc. and the appellants regarding the sale of grey market Mars products in Canada.

The appellants challenged the enforceability of the settlement agreements as being in restraint of trade, the motion judge's jurisdiction to order a reference on damages, and the award of substantial indemnity costs.

The Court of Appeal upheld the motion judge's decision, finding the settlement agreements reasonable under the Tank Lining test, confirming the court's jurisdiction to order a reference under Rule 20.04(3) on summary judgment, and affirming the substantial indemnity costs award based on the appellants' reprehensible conduct.

This endorsement addresses a refusals motion where the defendants, Eli Lilly, sought to question the plaintiff, Apotex, regarding communications with the government during Apotex's abbreviated new drug submission (ANDS) process.

Apotex argued that its drug approval process was immune from challenge by Lilly.

The court distinguished between an impermissible collateral attack on Health Canada's regulatory approval and a permissible inquiry into factors that might affect the "start date" for damages under s. 8(1)(a)(ii) of the Patented Medicines (Notice of Compliance) Regulations.

The court found Lilly's request to be probative of a properly pleaded issue concerning the quantum of damages, rather than the validity of the approval itself.

Consequently, the motion was granted, and the question was ordered to be answered.

The plaintiff, Schroeder & Schroeder Inc. (SSI), and the defendants, Stewardship Ontario (SO) and Canadian Stewardship Services Alliance Inc. (CSSA), brought cross-motions for summary judgment.

SSI claimed damages for breach of the Copyright Act, unjust enrichment, quantum meruit, and breach of contract related to the sub-licensing of an enterprise information software system (EIS System) it helped implement for SO.

SSI asserted intellectual property rights in the system.

The defendants sought dismissal of the action, arguing SSI had no intellectual property rights in the EIS System, which they contended belonged to SAP.

The court dismissed both motions, finding that the issues, particularly regarding SSI's copyright in the EIS System and the technical aspects of its configuration, required a trial and could not be resolved on the existing evidence.

A credibility issue regarding discoverability of the sub-license also precluded summary judgment on the limitations defence.

The defendants brought a motion to dismiss the action for want of jurisdiction, citing enforceable forum selection clauses, a lack of real and substantial connection between the litigation and Ontario, and abuse of process due to prior arbitration and litigation in California concerning the same subject matter.

The plaintiffs, largely self-represented, opposed the motion.

The court found that the forum selection clauses were valid and enforceable, Ontario lacked jurisdiction simpliciter as no presumptive connecting factors were established, and allowing the action to proceed would constitute an abuse of process given the prior resolutions in California.

The action was dismissed, and a sealing order was granted to protect confidential commercial information.

The defendants moved for summary judgment to dismiss the plaintiff's claim based on the expiration of the limitation period.

The plaintiff alleged misappropriation of software and breach of non-disclosure agreements and fiduciary duties.

The court applied the discoverability principle under the Limitations Act, 2002, finding that the plaintiff did not discover its claim until September 11, 2009, when it confirmed the defendants authored the disputed software.

Consequently, the action, commenced on September 9, 2011, was within the two-year limitation period.

The court dismissed the limitation defense, granting partial summary judgment to the plaintiff.

Secondary issues regarding discovery were adjourned or left to the trial judge.

The defendants brought a motion seeking directions on the interpretation of a previous order for the seizure and imaging of electronic devices, arguing it should implicitly incorporate standard Anton Piller Order protections and that Deloitte Inc. should be deemed an independent supervising solicitor.

The plaintiff resisted, asserting the original order was clear and granted on notice, not ex-parte.

The court dismissed the defendants' primary requests, holding that the order, having been granted after a full hearing with both parties present, did not automatically include ex-parte Anton Piller terms or appoint Deloitte as an independent supervising solicitor.

The court provided further directions for managing the collected electronic documents, including a timeline for the defendants to review MD5hash documents and the option for them to appoint their own expert to assist with keyword searches.

The defendants brought a motion to strike various portions of the plaintiff's statement of claim, which alleged misleading advertisement, misleading description under the Trade-marks Act, tort of unlawful means, copyright infringements, and conspiracy.

The court considered whether the pleadings disclosed a reasonable cause of action under Rule 21.01(1)(b) and whether they were scandalous, frivolous, or vexatious under Rule 25.11.

The court struck certain paragraphs related to direct statutory breaches and s. 36(1) of the Competition Act and s. 7(d) of the Trade-marks Act (with leave to amend for the latter two), but preserved allegations concerning false and misleading representations, the tort of unlawful means, and conspiracy, finding them relevant and sufficiently pleaded.

Nortel Networks Corporation and its Canadian debtor affiliates brought a summary judgment motion to dismiss claims by SNMP Research International, Inc. and SNMP Research Inc. for breach of contract, breach of confidence, and copyright infringement.

SNMP's claims arose from Nortel's post-CCAA filing sales of its business segments (LOBs), during which SNMP's proprietary software source code was allegedly transferred to purchasers without authorization.

The court dismissed SNMP's claim for disgorgement of Nortel's profits, finding no evidence that Nortel received revenue derived from the copyright infringement, as purchasers knew they were not acquiring rights to SNMP software and negotiated separate licenses.

However, the court held SNMP's damage claim in abeyance for six months, acknowledging ongoing discovery in a related U.S. proceeding and the possibility of future evidence regarding LOB purchasers' use of unlicensed SNMP software.