Court File and Parties

COURT FILE NO.: CV-22-459-00 DATE: 2024-09-18

ONTARIO

SUPERIOR COURT OF JUSTICE

B E T W E E N:

Lakehead District School Board, Plaintiff

• and - Anna Mauro o/a 807 ISC Thunder Bay, Defendant

COUNSEL: Mr. J. Lester, for the Plaintiff Ms. Mauro, personally, Defendant

HEARD: at Thunder Bay, August 12, 2024

Madam Justice H. M Pierce

Reasons on Summary Judgment Motion

Introduction

[1] The plaintiff School Board (“the Board”) alleges that the defendant infringed its copyright by producing and selling clothing featuring the names, mascots, logos, and colour schemes of schools operated by the Board without authorization.

[2] The plaintiff moves for summary judgment pursuant to r. 20.04 of the Rules of Civil Procedure, R.R.O. 1990, Reg. 194, arguing that there are no genuine issues requiring a trial.

[3] The plaintiff seeks judgment as follows:

1. A declaration; a) that copyright in the Works drawings subsists with the Board; and b) that the Board’s copyright and moral rights have been infringed by the defendant;
2. Damages in the amount of $23,891.52;
3. Punitive damages in the amount of $20,000;
4. A permanent injunction against the defendant preventing her from using any names, mascots, and/or logos for any of its schools, current or former, for a commercial purpose;
5. Delivery up of all infringing works in the defendant’s possession;
6. Prejudgment and post-judgment interest in accordance with the Courts of Justice Act; and
7. Costs of the action.

[4] The defendant claims that the plaintiff never registered the alleged works and cannot establish its entitlement to copyright. The defendant argues that summary judgment is not appropriate for this case and asks that the motion be dismissed.

Summary Judgment

[5] The relevant part of r. 20.04 states:

(2) The court shall grant summary judgment if,

(a) the court is satisfied that there is no genuine issue requiring a trial with respect to a claim or a defence …

[6] Rule 20.02(1) grants the court power, in determining whether there is a genuine issue requiring a trial, to weigh the parties’ evidence, evaluate the credibility of a deponent, and draw any reasonable inferences from the evidence. The rule requires the court to grant summary judgment unless it is in the interest of justice for the court to exercise those powers only at trial.

[7] In Hryniak v. Maudlin, 2014 SCC 7, [2014] 1 S.C.R. 87, the Supreme Court of Canada considered the scope of summary judgment motions. At para. 49, the court observed:

There will be no genuine issue requiring a trial when the judge is able to reach a fair and just determination on the merits of a motion for summary judgment. This will be the case when the process (1) allows the judge to make the necessary findings of fact, (2) allows the judge to apply the law to the facts, and (3) is a proportionate, more expeditious and less expensive means to achieve a just result.

[8] At para. 5 of the decision, the Supreme Court emphasized a broad interpretation of the summary judgment rules “favouring proportionality and fair access to the affordable, timely and just adjudication of claims.”

[9] Rule 20.02(2) requires each party to disclose the facts on which it relies, and the motions judge is entitled to assume that the affidavit evidence filed on the motion is the evidence that the parties would rely on at trial.

[10] I conclude that this case is appropriate for a summary judgment motion in that it will allow a proportionate, expeditious and less expensive result based on a sufficient evidentiary record for fact-finding and application of the law.

The Law

[11] In Canada, eligible works acquire copyright protection from their creation in permanent form. Section 2 of the Copyright Act, R.S.C., 1985, c. C-42, (“the Act”) defines “artistic work” as including drawings and compilations of artistic works.

[12] “Copyright” is defined in s. 3 (1) of the Act as follows:

For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever…. [Emphasis in original].

[13] This protection extends to employers when works are created in the course of employment. Section 13(3) states:

Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright, but where the work is an article or other contribution to a newspaper, magazine or similar periodical, there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the publication of the work, otherwise than as part of a newspaper, magazine or similar periodical.

[14] Section 14.1(1) of the Act also prescribes “moral rights” with respect to the protection of a work. It provides:

The author of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous.

[15] Justice Nieckarz succinctly outlined the framework for copyright law in 1422986 Ontario Limited v. 1833326 Ontario Limited, 2020 ONSC 1041, 172 C.P.R. (4th) 244, as follows:

[27] Copyright confers property in the expression of an original creation. It protects the expression of ideas once they are manifested in permanent form. It represents the sole right to produce or reproduce a work and prohibits others from making copies of the protected work.

[28] Section 5(1) of the Copyright Act provides that copyright shall subsist in Canada in every original literary, dramatic, musical and artistic work.

[30] Section 34.1(1) (a) of the Copyright Act creates a rebuttable presumption in favour of a copyright. [Citations omitted].

[16] Copyright law does not require the registration of a work to protect it from infringement. A proprietary right arises when an original work is created, independent of registration. The purpose of registration through the Copyright Office is to provide evidence of the copyright’s existence.

[17] Section 27(1) of the Act stipulates that:

It is an infringement of copyright for any person to do, without the consent of the owner of the copyright anything that by this Act only the owner of the copyright has the right to do.

[18] The Supreme Court of Canada explained, in Cinar Corporation v. Robinson, 2013 SCC 73, 3 S.C.R. 1168, at para. 1, that “[t]he unauthorized reproduction of a substantial part of an original work constitutes copyright infringement, for which a copyright owner can seek various remedies.”

[19] In considering whether there has been an infringement of copyright, the court should look at the work holistically, and not examine the copied features piecemeal. In the Cinar case, the Supreme Court focused on the “cumulative effect of the features copied”: see para. 36.

[20] The onus is on the plaintiff to prove that a copyright infringement has occurred, whether wholly or substantially.

[21] At para. 26 of Cinar, the Supreme Court described substantial infringement in the following terms:

A substantial part of a work is a flexible notion. It is a matter of fact and degree. “Whether a part is substantial must be decided by its quality rather than its quantity”. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein. [Citations omitted].

Evidence

[22] The Board’s Superintendent of Business, Kirsti Alaksa filed an affidavit on behalf of the Board. She stated that the Board is incorporated under s. 58. 5(1) of the Education Act, R.S.O. 1990, c. E.2, and is empowered to “perform all the duties that are conferred or imposed on it under this or any other Act.”

[23] Ms. Alaksa deposed that, in its capacity as a public board, the Board oversees all public schools in the Thunder Bay area. She added that part of its corporate purpose is to control copyright and moral rights to names, mascots, and logos for all of its schools.

[24] She indicated that the Board previously administered six secondary schools: Fort William Collegiate Institute, Port Arthur Collegiate Institute, Selkirk Collegiate and Vocational Institute, Lakeview High School, Hillcrest High School, and Sir Winston Churchill Collegiate and Vocational Institute.

[25] On November 14, 2022, Ms. Alaksa became aware that the defendant, Anna Mauro, who is the sole proprietor of a store in the Intercity Shopping Centre called 807, was selling, without permission, t-shirts and sweatshirts depicting the names, logos, mascots, and school colours associated with the Board’s former high schools.

[26] On December 6, 2022, the Board, through its solicitor, delivered a demand letter to Ms. Mauro asserting its copyright over the designs and concepts involving the schools’ names and logos. Among other remedies, the letter required Ms. Mauro to stop further copyright infringement, remove and destroy the offending products, and confirm by 4 p.m. on December 6, 2022, that she had done so.

[27] Ms. Mauro replied by email that day, indicating that she didn’t realize the memorabilia clothing was an infringement of copyright and proposing mutual fund-raising opportunities involving her product line.

[28] Ms. Mauro used logos she found on Facebook sites dedicated to the former high schools, and in the case of Selkirk High School she used a yearbook to create vintage designs.

[29] Counsel for the Board emailed Ms. Mauro on December 6, 2022, indicating that he would seek instructions but, in the meantime, all products displaying Board content must be withdrawn from sale. Counsel also queried as to who had supplied the logos used on the clothing.

[30] Ms. Mauro emailed her response later that evening. She advised that the logos were not supplied by the Board. She stated that she did not believe she was infringing copyright with the vintage logos because they had been offered for sale by others on Facebook. She advised that the Board’s current schools had been approached about producing items as fund-raising for teams.

[31] Ms. Mauro declined to withdraw the goods, advising that it was peak season for her pop-up store, which was scheduled to close on December 31, 2022. However, she offered to compensate the Board with royalties from her past sales and agreed not to produce any more merchandise without permission.

[32] On December 8, 2022, counsel for the Board again emailed Ms. Mauro, advising that the Board was not interested in Ms. Mauro’s proposal for school fund-raising. He stated that the Board demanded confirmation, by 10 a.m. on December 9, 2022, that the goods had been withdrawn from sale, failing which the Board would sue.

[33] During litigation, Ms. Mauro disclosed her proceeds from selling this merchandise, but not the costs of production.

[34] Ms. Mauro responded to the Board’s claim with her own affidavit. She indicated that, although she had experience with retailing licensed clothing, the costs were higher in order to cover the licensing fees. She intended to create a generic, non-licensed, vintage clothing line, at a lower price point, to engage the market for nostalgia.

[35] Ms. Mauro decided to create nostalgic pieces evoking the 1980s based on fictional high schools or high schools that shared a common name. She stated:

Therefore, I decided to create my own vintage line of 80s themed high school apparel. I do not deny that I used as inspiration the high schools in Thunder Bay that existed in the 70s and 80s. However, I was careful to only select schools that no longer existed and use them as inspiration only.

[36] Ms. Mauro states that her designs did not include the words “high school” or “Thunder Bay”, as she was intending that her line would appeal to both younger customers and tourists.

[37] With respect to mascots depicted on the designs, Ms. Mauro indicated that, with one exception, she used stock photos, which are not subject to the plaintiff’s current copyright claims. She admits that the design for Selkirk High School was taken from a yearbook supplied by former students. Although her copyright and trademark search produced negative results for “Selkirk,” she discontinued this design.

[38] Ms. Mauro contends that the Board could not assert copyright claims to the words “Hillcrest,” PACI,” “Lakeview,” or “Churchill,” as there are many schools that share these names. She deposes that she did a thorough copyright and trademark search to ensure that the artwork was not copyright-protected and in the public domain.

[39] Ms. Mauro refused the Board’s demand that she destroy the offending clothing on the basis that the plaintiff could not establish ownership rights in any of the art. However, she withdrew these items from sale.

Discussion

[40] Ms. Mauro contends that this action is inspired by her business competitors, who are under contract with the Board to sell school uniforms. Apart from her suspicion to that effect, there is no evidence to support this claim.

[41] Ms. Mauro also deposed that she did a copyright and trademark search of the artwork and attached exhibits to this effect in her affidavit.

[42] There are three problems with this statement. Firstly, there is no indication of whether these searches were done before or after the Board’s initial complaint. Secondly, Ms. Mauro’s search of the Trademarks Data Base has no application to this case because the Board does not allege a trademark infringement. Thirdly, a search of the Canadian Copyright Data Base does not identify unregistered artwork. In this case, the Board does not claim that it registered its copyright to artwork associated with the high schools.

[43] The court must determine the following issues:

1. Does the copyright subsist with the Board?
2. If the answer is yes, was the copyright infringed?
3. If there was an infringement, what remedies is the Board entitled to?

[44] Ms. Mauro disputes that the alleged works are original and therefore caught by the Act. Alternatively, she submits that the Board does not enjoy a copyright in the alleged works. She states that she has repeatedly asked the Board for proof that it owns the copyright either as the original author, by virtue of copyright registration, or through assignment or a license agreement.

[45] She relies on the case of Close Up International Ltd. v. 1444943 Ontario Ltd. to support her position. The Close Up case involved a motion to amend a statement of claim to add parties. The issue was whether the parties proposed to be added had standing to assert breach of copyright. Master Dash concluded they did not have standing on the basis that they did not have an assignment of interest in the copyright.

[46] The facts in the Close Up case make it distinguishable from the case at bar, where the Board asserts that it has a moral claim as of right to the artwork identifying schools previously under its jurisdiction.

[47] Ms. Mauro also cites the Supreme Court of Canada’s decision in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, 1 S.C.R. 339, which considers whether permitting photocopying as part of library services amounts to a breach of copyright. CCH is not helpful in this case because it involves a discussion of fair dealing in relation to copyright law, which is not the issue in this motion.

[48] In my view, the Board’s authority, as granted by the Education Act, to “perform all duties” conferred or imposed by the Act necessarily extends to corporate control and proprietary interest in artwork developed to identify schools – past and present – under its administration.

[49] On a balance of probabilities, I infer that the original creation of the artwork identifying the high schools was made in an employment context, under the authority of the Board. The rebuttable presumption in favour of copyright is therefore made out.

[50] I find that copyright subsists with the Board, which has a moral and a statutory right extending to names, mascots, and logos for all of its current and former schools.

[51] Ms. Mauro argues that if the Board enjoys copyright, her artwork did not breach the copyright because her products were sufficiently different from the logos. She submits that her product line did not identify either the high schools nor identify them as Thunder Bay schools.

[52] She points to other schools and institutions with the same names or initials. She also claims that, except for the Selkirk High School design, her artwork was taken from the public realm and was generic in focus, designed to appeal to American customers and students who never attended the former high schools.

[53] I do not agree. Examining the designs in a holistic sense, I conclude that they were created to evoke local nostalgia for the now-closed Thunder Bay high schools. Indeed, Ms. Mauro’s affidavit states:

I do not deny that I used as inspiration the high schools in Thunder Bay that existed in the 70s and 80s. However, I was careful to select only schools that no longer existed and use them as inspiration only.

[54] The combined use of historic school colours, mascots, logos associated with the schools, and the school names or abbreviations, such as “FWCI” or “PACI”, was designed to identify these specific schools and evoke nostalgia in the Thunder Bay community, which was Ms. Mauro’s intended primary market. In a small city, such as Thunder Bay, the touchstones for these schools would immediately be understood, not only by the former students and staff at these high schools, but in the broader community.

[55] It is evident that Ms. Mauro did not seek permission from the Board prior to creating her high school nostalgia line of clothing and offering it for sale. In failing to do so, I find that Ms. Mauro infringed the Board’s copyright, as well as and the Board’s moral rights with respect to the integrity of its work identifying high schools that it had administered.

Declaratory Relief

[56] The Board claims declarations, pursuant to s. 97 of the Courts of Justice Act, R.S.O. 1990, c. C. 43, that copyright in the works drawings subsists with the Board, and that the Board’s copyright and moral rights have been infringed by the defendant.

[57] In Rains v. Molea, 2013 ONSC 5016, 114 C.P.R. (4th) 161, at para. 91, Chiappetta J. observed:

In my view, declaratory relief is appropriate if copyright subsists and infringement is established. Copyright vests rights exclusively in its owner. A misappropriation of those rights warrants a binding declaration of the rights determined to be properly vested. [Citations omitted.]

[58] In my view, such declaratory relief is appropriate to protect the Board’s rights to copyright in the works for future. A declaration will issue:

a) that copyright in the works drawings subsists with the Board; and b) that the Board’s copyright and moral rights have been infringed by the defendant, Anna Mauro.

Remedies

[59] Section 34(1) of the Act prescribes the following remedies for infringement of copyright:

[60] Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.

[61] The same remedies are available for infringement of moral rights, pursuant to s. 34(2).

Injunction/Delivering Up

[62] The Board also seeks a permanent injunction against the defendant.

[63] In my view, an injunction is a bookend remedy, which, when joined with declaratory relief, sends a strong signal to the defendant and other like-minded individuals, that the court will intervene to protect copyright.

[64] A permanent injunction will therefore issue prohibiting Anna Mauro from using names, mascots, and/or logos for any of the Board’s current or former schools for a commercial purpose. As well, Ms. Mauro is ordered to forthwith deliver up to the plaintiff all infringing works in her possession or under her control.

Damages

[65] The Board claims disgorgement of profits identified by Ms. Mauro in the amount of $23,891.52.

[66] During the discovery process, Ms. Mauro was asked to provide data on the proceeds she received from sales of the copyright goods. She produced sales charts indicating that she sold 982 units, comprising 12 different versions of sweatshirts and t-shirts, for a total of $23,891.52. She submits that costs for labour, taxes, rent and other expenses are not factored in.

[67] In a summary judgment motion, the court is entitled to conclude that each party has put his or her best foot forward, such that the evidence adduced at trial will not be more favourable than the evidence on the motion. In the face of a claim for disgorgement of profits, the onus of proof is on the defendant to prove her net profits. She has not done so.

[68] The plaintiff shall have judgment against the defendant for damages in the amount of $23,891.52.

[69] Pre-judgment interest shall run from December 6, 2022, in accordance with s. 128(1) of the Courts of Justice Act. Post-judgment interest will also run in accordance with the Act.

Punitive Damages

[70] The Board seeks punitive damages in the sum of $20,000, arguing that the defendant continued to sell the goods in breach of the plaintiff’s copyright when she was on notice that the Board was asserting its rights.

[71] In my view, this is not a case for punitive damages. The defendant immediately responded to the Board’s solicitor once his letter came to her attention. Once the negotiations between the parties concluded, the goods were offered for sale for a further 23 days during December. Presumably, the pre-Christmas period would represent the peak of her sales. This was a small operation and the revenue from the sale of these items was modest.

[72] The plaintiff’s motion for punitive damages is dismissed.

Costs

[73] If the parties cannot agree on costs within 30 days from the date of the release of these reasons, either may apply to the trial coordinator to fix a date to argue costs. Submissions shall not exceed five pages, exclusive of offers to settle.

“original signed by”

The Hon. Madam Justice H.M. Pierce

Released: September 18, 2024