Intellectual Property Law - SCJ

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 defendants brought a motion to dismiss the plaintiffs' action for want of jurisdiction.

The plaintiffs, an inventor and his company, sued multiple foreign corporate and individual defendants for breach of a Non-Disclosure Agreement and intellectual property claims.

The court found that the Non-Disclosure Agreement contained a clear forum selection clause designating Massachusetts.

Furthermore, applying the Van Breda test, the court held it lacked jurisdiction simpliciter as none of the presumptive connecting factors were present in Ontario.

The action was dismissed.

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 plaintiffs appealed a Master's order striking out four paragraphs of their Statement of Claim.

The paragraphs alleged that the defendant landlords had general knowledge that counterfeit merchandise was being sold at their flea market.

The Master struck the paragraphs under Rule 25.11, finding them irrelevant and scandalous.

The Superior Court allowed the appeal, holding that the law on a landlord's vicarious liability for tenants selling counterfeit goods is unsettled, and it was an error to strike potentially relevant material facts at the pleadings stage.

The applicant, Trader Corporation, operating digital marketplaces for vehicles, alleged copyright infringement by the respondent, CarGurus, Inc., a competitor, for posting photos taken by Trader's photographers on its own website.

Trader sought a declaration of infringement, a permanent injunction, and statutory damages.

The court found that Trader owned copyright in 152,532 photos and that CarGurus infringed them.

The fair dealing defence was rejected, and CarGurus was not considered an "information location tool" exempt from statutory damages.

However, the court found that the minimum statutory damages of $500 per photo would be grossly disproportionate and reduced the award to $2 per photo, totaling $305,064.

Requests for punitive damages and a permanent injunction were dismissed.

The moving parties (innovator drug manufacturers) brought a motion for summary judgment to dismiss the responding party's (generic drug manufacturer) claim for damages under section 8 of the Patented Medicines (Notice of Compliance) Regulations.

The moving parties argued that the generic drug could not have been lawfully approved by Health Canada in April 2007 due to non-compliance with bioequivalence study guidelines, rendering the section 8 claim invalid.

The court dismissed the motion, finding that Health Canada's guidelines did not have the force of law and that the evidence established the generic drug would have received a Notice of Compliance in April 2007 but for the moving parties' prohibition proceedings.

The court also distinguished prior case law and held that the moving parties lacked standing to challenge the Minister's drug approval decisions in a section 8 damages action.

The plaintiff sought leave to appeal an order dismissing its motion for partial summary judgment, where the motion judge found insufficient evidence to precisely identify the intellectual property sought to be protected.

Applying the strict test for leave to appeal under Rule 62.02(4), the court found no conflicting decision on principle and no good reason to doubt the correctness of the order, despite minor issues with the motion judge's articulation of legal tests.

The court also determined that the matter did not raise questions of general or public importance.

The motion for leave to appeal was dismissed, and costs were awarded to the respondent.

The plaintiff brought a second motion for default judgment seeking damages, an injunction, and recovery of decontamination equipment from a former licensee.

The court found that the plaintiff failed to exercise its contractual option to repurchase the equipment, meaning the defendant lawfully owned it.

The court also rejected the plaintiff's attempt to restrict the defendant's use of the equipment based on vague intellectual property claims over 'know-how'.

As the plaintiff's claims for conversion, passing off, and unjust enrichment were premised on the erroneous assumption that the defendant could not use the equipment, and no concrete evidence of actual damages was provided, the balance of the action was dismissed.

The plaintiffs sued the defendants for allegedly breaching a software license agreement by using proprietary source code to develop a competing product.

The plaintiffs brought a motion under Rule 32.01 of the Rules of Civil Procedure for an order to inspect the defendants' computer systems.

The court dismissed the motion, finding it premature as traditional documentary discovery had not yet occurred, and noting that the proposed inspection was wide-ranging and highly intrusive.

The dismissal was without prejudice to the plaintiffs' right to bring a new motion after discovery.

The applicant sought a declaration that the respondent breached their software distribution agreement by developing and marketing a competing radio scheduling product prior to the end of the agreement's winding-up period.

The applicant also sought a springboard injunction.

The court interpreted the agreement and found that it did not prohibit the respondent from developing its own product for the US market or marketing a competitive product during the notice or winding-up periods.

The court also found no breach of the duty of honest performance by the applicant, but ultimately dismissed the application as the respondent had not breached the agreement.

The defendants abandoned their motion to strike the plaintiffs' claim on the day of the hearing.

The plaintiffs sought substantial indemnity or partial indemnity costs for preparing for this motion.

The court considered various factors under the Rules of Civil Procedure, including the complexity of the issues, the importance of the issues, and the parties' conduct.

The court found the hourly rates reasonable but the time docketed excessive given the nature of the motion and the plaintiffs' prior experience with similar motions.

The court awarded partial indemnity costs, finding that the defendants' conduct did not warrant substantial indemnity.

Following a summary judgment finding the defendants liable for breaching two settlement agreements by importing and selling goods bearing the plaintiff's trademarks, the plaintiff sought costs on a substantial indemnity basis.

The court found that the defendants brazenly breached their agreements and engaged in reprehensible litigation tactics that maximized costs and delay.

The court awarded the plaintiff costs of $225,000 on a substantial indemnity basis.

VMedia sought a declaration that its new internet retransmitting service, which simultaneously retransmits over-the-air television signals, does not infringe Bell's copyrights in CTV programming.

VMedia argued it was entitled to a compulsory license under section 31 of the Copyright Act because it operated under its Broadcast Distribution Undertaking licenses rather than the CRTC's New Media Exemption Order.

The court found that VMedia's service is delivered and accessed over the internet, meaning it operates under the Exemption Order and is statutorily excluded from the compulsory licensing regime.

VMedia's application was dismissed, and Bell's counter-application for a declaration of copyright infringement and a permanent injunction was granted.

The defendants, originator pharmaceutical companies, brought a motion to strike portions of the plaintiff generic manufacturer's statement of claim, or alternatively for particulars.

The plaintiff sought damages under section 8 of the PMNOC Regulations and the Statutes of Monopolies for delayed market entry due to an allegedly invalid patent.

The court struck the Statutes of Monopolies claims as premature because the plaintiff had not yet obtained an in rem declaration of invalidity from the Federal Court.

The court also struck 'basket clause' claims but allowed claims against a related corporate entity and allegations of an anti-competitive product switching campaign to proceed.

Particulars were ordered for claims of lost sales, profits, and business opportunities.

The plaintiff brought a summary judgment motion arising from alleged breaches of two settlement agreements prohibiting grey marketing of branded products in Canada.

The court rectified a misnamed party in the first settlement, held that the corporate defendants and the individual defendant were bound by and in breach of their respective settlement agreements, and rejected the defence that the agreements were void restraints of trade.

In applying the restraint of trade analysis, the court emphasized the settlement context, the plaintiff’s statutory rights as registered trade-mark owner, and the illegality of the imported products under federal labelling and packaging law.

Declaratory relief was granted, damages were referred to a Master for quantification, punitive damages were refused, and only a limited counterclaim remained.

The defendant successfully repelled the plaintiffs' motion for an interlocutory injunction and sought its costs of the motion payable forthwith.

The parties agreed to fix the quantum of costs at $150,000.

The court departed from the general rule that a successful defendant on an interlocutory injunction motion is presumptively entitled to costs payable forthwith, noting that the plaintiffs only sought a permanent injunction at trial and there were factual issues regarding the defendant's conduct.

The court fixed the costs at $150,000 but reserved the issue of entitlement to the trial judge.

The defendant, Apotex, brought a motion to strike portions of the plaintiffs' statement of claim and response to a demand for particulars.

The underlying action alleged that Apotex breached a settlement agreement and a duty of good faith by selling an extraordinary volume of a generic drug during a six-month market withdrawal period.

Apotex argued that one of the plaintiffs was an improper party and that the claim for breach of good faith had no reasonable prospect of success.

The court dismissed the motion, finding it was not plain and obvious that the claims would fail, noting that the law on the duty of good faith in contract performance is still developing.

The plaintiff, One Street Digital Inc. (OSD), brought a motion seeking a final order declaring its ownership of proprietary software ("Foundation Framework"), restraining the defendant, Berkeley Payment Solutions Inc. (BPS), from using or altering it, and requesting costs.

The court dismissed OSD's motion, finding that OSD failed to provide sufficient evidence to precisely identify the non-copyrighted proprietary software it claimed.

The court also determined that the relief sought was analogous to injunctive relief, and OSD did not demonstrate irreparable harm, as potential damages related to licensing fees and intellectual property value could be adequately assessed at trial.

The plaintiff, Arnold Hennessy Holdings Inc., moved for summary judgment against Flapperless Inc. and Philip Hennessy for unpaid royalties under licensing agreements for "tip-tank" toilet technology.

The defendants argued the claim should be brought by Arnold Hennessy's estate, was statute-barred, and that an oral agreement amended the written contracts.

They also raised procedural issues regarding disclosure and counsel.

The court dismissed the defendants' preliminary objections and found Hennessy Holdings to be the proper plaintiff.

The action was deemed not statute-barred, as the plaintiff discovered the breach within the limitation period.

The court rejected the existence of an oral agreement to vary the written terms, finding Philip Hennessy's uncorroborated evidence insufficient.

While Philip Hennessy was a proper party, the court found no basis to pierce the corporate veil to hold him personally liable for Flapperless's financial obligations.

The plaintiff was granted judgment for unpaid royalties against Flapperless Inc. but denied a declaration seeking to enjoin the transfer of intellectual property to Philip Hennessy, as the transfer had already occurred upon Arnold Hennessy's death and damages were an adequate remedy.

Bell Canada sought an interlocutory injunction against Cogeco Cable Canada GP Inc. regarding two aspects of Cogeco's new advertising campaign: the phrase "the best Internet experience in your neighbourhood" and the rebranding of Internet packages with the prefix "Ultra" (e.g., UltraFibre 250).

Bell alleged false and misleading representations under the Competition Act and Trade-marks Act, as well as common-law claims.

The court applied the RJR-MacDonald test for interlocutory injunctions.

It found a serious question to be tried, irreparable harm, and that the balance of convenience favored granting an injunction against the use of "the best Internet experience in your neighbourhood" as Cogeco could not objectively claim to offer the best speed and performance in all areas.

However, the court denied an injunction regarding the "UltraFibre" branding, deeming it puffery when accompanied by specific speed commitments.