Intellectual Property Law

The plaintiffs sought to hold the defendants, Imran and Naeem Butt, in contempt of a prior judgment from Justice Pattillo dated August 1, 2018, which recognized and enforced a U.S. judgment prohibiting copyright and trademark infringement related to pirated television channels sold under the "ShavaTV" brand.

The defendants conceded some contempt but disputed its extent.

The court found the defendants in broad contempt, rejecting their claim that the business was transferred to a third party in Pakistan, Rizwan Ahmed Shams.

The court found the alleged transfer implausible due to lack of documentation, continued use of the defendants' PayPal accounts for business and personal expenses, and Mr. Shams' refusal to be cross-examined.

The court also confirmed jurisdiction over Naeem Butt, who resided in Germany, due to the real and substantial connection with Ontario, including sales to Ontario purchasers and use of a Canadian hosting company.

The applicant, Dead End Survival, LLC, sought to enforce a judgment from the United States District Court for the Northern District of Georgia Atlanta Division against the respondent, Georgi Marhasin (operating as Marhasin Warehouse).

The foreign judgment included a permanent injunction and damages for trademark infringement, unfair competition, fraud, and other torts.

The respondent raised a preliminary objection that the matter should have proceeded by action, not application, and defended on grounds of fraud and public policy (excessive statutory damages).

The court dismissed the preliminary objection, finding an application appropriate due to no material factual disputes.

The court also rejected the fraud defence, noting the respondent's failure to defend in the foreign proceedings and the lack of new material facts.

The public policy defence regarding excessive damages was also dismissed, as U.S. trademark law was not contrary to Canadian justice, and the defence does not bar enforcement merely because damages differ from Canadian awards.

The application to enforce the foreign judgment was granted.

The applicant, Dead End Survival, LLC, sought to enforce a foreign judgment from the United States District Court for the Northern District of Georgia Atlanta Division, which included a permanent injunction and statutory damages for trademark infringement.

The respondent raised preliminary objections regarding the form of proceeding (application vs. action) and substantive defenses of fraud and public policy (excessive damages).

The court dismissed the preliminary objection, finding an application appropriate due to no material factual disputes.

The court also rejected the fraud defense, noting the allegations were not new and could have been raised in the foreign proceedings, and the public policy defense, affirming that foreign damages exceeding Canadian awards do not inherently violate public policy.

The application to enforce the foreign judgment was granted.

The plaintiffs, Evertz Technologies Limited and Evertz Microsystems Limited, brought an action alleging theft of confidential information by former employees and competing businesses.

The defendants moved to strike the statement of claim in its entirety, arguing that the plaintiffs failed to provide sufficient particulars regarding the alleged confidential information, its misuse, and its incorporation into the defendants' products.

The court found that the statement of claim, even with supplemental particulars, did not meet the minimum level of material fact disclosure required for claims of misappropriation and misuse of confidential information.

Consequently, the statement of claim was struck out, but the plaintiffs were granted leave to serve an amended statement of claim within 30 days.

The defendants brought two motions to amend their pleadings in an action for "section 8" damages under the Patented Medicines (Notice of Compliance) Regulations.

The proposed amendments sought to introduce a defence based on the ex turpi causa doctrine, arguing that the plaintiff's alleged non-infringing alternative (NIA) would infringe a third-party patent, thus making hypothetical sales unlawful and precluding damages.

The plaintiff opposed, arguing the amendments were not tenable and would cause non-compensable prejudice.

The court, applying Rule 26.01, found the proposed amendments raised tenable legal arguments, distinguishing and interpreting relevant case law on NIAs and the ex turpi causa doctrine.

The court also found that any prejudice to the plaintiff could be compensated by costs or an adjournment.

The motions to amend the pleadings were granted.

The plaintiff sought an interlocutory injunction to prevent the defendants from using the name "Kishki Halal Supermarket" for a new grocery store, alleging passing off.

The court applied the three-stage test for interlocutory injunctions from *RJR-MacDonald* and the components of a passing off action.

The court found that the plaintiff failed to establish a serious issue to be tried, specifically regarding public deception and actual/potential damage caused by deceptive misuse of goodwill.

The court also found no irreparable harm and that the balance of convenience favored the defendants.

The motion was dismissed, and costs were awarded to the defendants.

The defendants brought a motion under Rule 21.01(1) to strike portions of the plaintiff's statement of claim, specifically targeting claims against defendant Tyulenyev, the claim for passing off, and the claim for unlawful interference with economic relations.

The court applied the "plain and obvious" test, finding that sufficient material facts were pleaded to support the claims against Tyulenyev, including personal liability for copyright infringement despite not being a directing mind of the corporation.

Regarding the passing off claim, the court acknowledged its novelty in recognizing the "style and content" of reports as a "get-up" but held that novelty alone is not a basis to strike a claim if material facts are pleaded and there is a reasonable prospect of success.

For the unlawful interference claim, the court found that an intention to injure could be inferred from the pleaded facts and that the "public" relying on the plaintiff's reports was sufficiently identified as a third party.

Consequently, the motion to strike was dismissed in its entirety.

The plaintiff, Kevin Ramon Johnson, sued the defendant, Deniz Rakhmanova, for libel and unlawful interference with economic relations, seeking substantial damages and a permanent injunction.

Both parties, self-represented, brought motions for summary judgment.

The plaintiff's motion was dismissed due to his repeated non-attendance.

The defendant's cross-motion sought to dismiss the proceeding as frivolous, without merit, and a Strategic Lawsuit Against Public Participation (SLAPP).

The court dismissed the claim for unlawful interference with economic relations due to insufficient pleading.

For the defamation claim, the court found that most of the defendant's statements were truthful and justified, relating to the plaintiff's unauthorized use of her vocals in a new song recording (Recording 2), thereby dismissing those parts of the defamation claim.

The remaining defamation claims were also dismissed as the appropriate forum was deemed to be the United States, given the plaintiff's reliance on a US copyright registration.

The defendant's anti-SLAPP motion was dismissed as the dispute was not a matter of public interest.

The plaintiff was ordered to pay costs to the defendant for her material success on the motion and his non-attendance.

This endorsement addresses three complex motions brought by the plaintiff Apotex Inc. and the defendants Sanofi-Aventis, Sanofi-Aventis Deutschland GmbH, Sanofi-Aventis Canada Inc. (collectively "Sanofi"), and Schering Corporation ("Schering"), seeking to compel answers to undertakings and refusals in a long-running pharmaceutical patent litigation.

The motions involved approximately 480 questions, later narrowed to 101.

The Master applied principles of relevance and proportionality under the Rules of Civil Procedure, emphasizing the balance between extensive discovery requests and the significant damages claimed.

Many broad requests for documents and information were denied as disproportionate or overbroad, while narrower, more targeted requests were granted.

The court also addressed issues of solicitor-client privilege and the obligation to state legal positions.

The plaintiff, Aon Benfield Canada ULC, sought an award of costs following a proceeding that involved an interim injunction, an interlocutory injunction, and a settlement of the action.

The defendant, Aamir Vazir, a former employee, had misappropriated highly sensitive proprietary software ("PathWise") and attempted to erase evidence.

The court granted the injunctions and the action settled, with costs being the only outstanding issue.

Aon Benfield sought $269,463.89 in costs, including significant disbursements for technical support.

Vazir opposed, arguing issues related to the plaintiff's conduct and the proportionality of the costs.

The court found the hours worked by the plaintiff's counsel not excessive given the case's importance and Vazir's egregious conduct.

However, to balance the indemnity principle with access to justice and avoid a "chilling effect," the court reduced the legal fees by $20,000, awarding Aon Benfield $249,463.89, payable within 90 days.

The plaintiffs sought summary judgment to recognize and enforce a U.S. default judgment in Ontario against the defendants for copyright and trademark infringement and unfair competition.

The defendants challenged the U.S. court's jurisdiction, alleged fraud, and claimed a denial of natural justice due to improper service.

The Ontario Superior Court found that the U.S. court properly exercised jurisdiction based on a 'real and substantial connection' to Virginia, dismissed the fraud defense, and confirmed proper service.

The court granted summary judgment, enforcing both the monetary damages and the permanent injunction from the U.S. judgment.

The defendants brought motions under Rule 21.01(1)(b) to strike the plaintiff's statement of claim for disclosing no reasonable cause of action, alleging "theft of trade secret" related to shilajit in vitamin compositions.

The plaintiff cross-moved for leave to amend.

The court found that the plaintiff's claim of a "trade secret" was invalid because the information had been publicly disclosed through patent applications, thereby forfeiting any confidentiality.

Furthermore, the plaintiff had assigned all rights, title, and interest in the invention to Creative Nutrition Canada Corp. in 1991, thus lacking proprietary interest to assert any claim.

The court concluded that the statement of claim, even with proposed amendments, was certain to fail.

A class action appeal concerning copyright ownership in plans of survey registered or deposited in Ontario's electronic land registry system (ELRS).

The appellant land surveyors claimed that Teranet Inc., which operated the ELRS, infringed their copyright by digitizing, storing, and copying their survey plans.

The motion judge granted summary judgment dismissing the action, finding that copyright in registered or deposited plans belonged to the Province of Ontario under section 12 of the Copyright Act.

The Court of Appeal affirmed this decision, holding that the provincial land registration scheme gave the Crown complete control over registered plans, and that the Crown's publication of those plans through the ELRS occurred under the Crown's direction or control, thereby vesting copyright in the Crown.

The plaintiff, Trindent Management Consulting Inc., brought a motion for particulars of two paragraphs in the defendants' (Carpedia International Ltd. et al.) statement of defence and counterclaim.

The defendants alleged that Trindent's president, Adrian Travis, improperly took and used Carpedia's confidential and proprietary information when he left to start Trindent.

The defendants argued that the particulars were within Travis's knowledge and not necessary for Trindent to plead.

The court granted the motion, finding that particulars were necessary to enable Trindent to prepare a defence, delineate the scope of productions and discoveries, and define the issues for trial, rejecting the argument that the information was solely within the plaintiff's knowledge.

The appellant appealed a trial judgment dismissing its action for breach of a licensing agreement and patent infringement.

The trial judge found that the respondent's accused products did not infringe the appellant's U.S. patent for a self-ligating orthodontic bracket because the accused products' locking shutter moved primarily through rotation rather than the purely sliding motion required by the patent claims.

The Court of Appeal upheld the trial judgment, finding no error in the trial judge's construction of the patent claims within the context of the specification.

The court also upheld the costs award against the appellant.

The defendants, Jiangsu Sainty Sumex Tools Corp. Ltd. and Canadian Tire Corporation, Limited, moved to set aside a default judgment granted against Jiangsu Sainty Sumex and its prior noting in default.

Canadian Tire also sought to set aside or vary the judgment, particularly its in rem declarations concerning intellectual property rights, arguing they were non-binding on Canadian Tire.

The default judgment was obtained by the plaintiff without notice to counsel for either defendant and without full disclosure of material facts to the court, including a Trademark Opposition Board decision against the plaintiff's claimed trademark, an expired patent, and ongoing discussions with the defaulting defendant's counsel.

The court found the plaintiff's conduct inappropriate and set aside the default judgment due to lack of notice and non-disclosure.

The noting in default for Jiangsu Sainty Sumex was also set aside, conditional on the defendant posting security for damages and costs, providing an affidavit of documents, and producing a witness for discovery, to ensure the matter proceeds to a full trial on the merits.

The court addressed three motions: the defendants' motion for summary judgment to dismiss the plaintiff's claims, the plaintiff's motion to strike portions of the statement of defence and counterclaim, and the plaintiff's motion for an interlocutory injunction.

The court denied the plaintiff's request for an adjournment, finding a breach of diligence.

The defendants' motion for summary judgment was granted, dismissing all of the plaintiff's claims, including those for defamation, domain name ownership, theft of trade secrets, corporate espionage, passing off, copyright, and trademark infringement.

The court found the plaintiff acted in bad faith regarding domain name registrations and meta-tag use.

The plaintiff's motions were dismissed.

The Plaintiffs, Accreditation Canada International and Accreditation Canada, brought a motion to extend and vary an interlocutory injunction against former employees, José Luis Cabezas Guerra and Bieu (Marty) Van Huynh, and their company, Efficiency on Health Services Canada Inc. The Plaintiffs alleged breach of contract, fiduciary duty, and confidence due to the Defendants' use of confidential information and solicitation of clients under misleading trade names.

The court applied the R.J.R. Macdonald test for injunctions, finding a strong prima facie case, irreparable harm, and that the balance of convenience favored the Plaintiffs.

The motion for an interlocutory injunction was granted.