[1] This is a motion by Kraft Canada Inc. requesting that I reconsider paragraph 1 of my order of May 3, 2004 on the grounds that it does not appear to accord with the reasons given, and that a matter which should have been dealt with was either overlooked or accidentally omitted, that being directions as to the method Euro Excellence Inc. may employ to render non-infringing the packaging of the Toblerone and Côte d'Or products it intends to distribute and sell in Canada. By order dated May 3, 2004, with accompanying reasons, Euro Excellence Inc. was enjoined from selling, distributing, exposing or offering for sale copies of artistic works, namely packaging design elements identified as the Toblerone bear within a mountain and the Côte d'or elephant. Since subsection 27(2) of the Copyright Act declares that it is an infringement of copyright for a person to possess or to import into Canada copyrighted works for those purposes, Kraft submits that I inadvertently omitted to include possessing and importation in the order. That is not the case. I deliberately excluded possession and importation from the order.
[2] Kraft, subject to what the Court of Appeal may say, is entitled to prevent Euro Excellence from distributing the copyrighted artwork in the chocolate bar wrappers. I said at paragraph 60 of the reasons that "there is nothing to prevent Euro Excellence from replacing the wrappers or otherwise covering over the copyrighted material."
[3] In discussing injunctive relief, I said paragraph 64:
[64] Consequently, I find no reason to deny Kraft injunctive relief as regards the copyrighted work in the chocolate bar wrappers, and in price lists distributed by Euro Excellence. However, to maintain some semblance of peace and order, I will not require Euro Excellence to recall product which has already left its control. Nor will I call upon Euro Excellence to deliver up its inventory to Kraft. The appropriate order is that the product be rendered non-infringing. If the parties cannot reach an agreement in this connection, I am prepared to issue directions.
[4] There was, and is, no reason to assume that Euro Excellence will not abide by the order. It is not contrary to the Copyright Act to import into Canada and to possess Toblerone and Côte d'Or chocolate bars in wrappers which display the copyrighted artistic works. What is important is the purpose for which they are imported and possessed. A traveller who brings a Toblerone or Côte d'Or chocolate bar into Canada, eats it here, and discards the wrapper is not in violation of the Act. I did not intend to prohibit Euro Excellence from importing and possessing the chocolate bars in their original wrappers. I certainly did not say that the wrappers had to be rendered non-infringing in Europe. As long as Euro Excellence renders the wrappers non-infringing, whether it does so in Canada or elsewhere, before it sells, distributes, exposes or offers for sale the product in question, it will not be in violation of section 27(2) of the Copyright Act.
[5] This brings us to the second issue which is the manner in which the packaging can be rendered non-infringing. I left it to the parties to endeavour to reach an agreement. However, they have been unable to do so.
[6] The only evidence on point is in the form of the affidavit of André Clemence, Euro Excellence's president. After consulting with a printing company, he proposes to cover up the copyright material with a self-sticking plastic film. The film would be translucent but the part which covers the Toblerone bear within a mountain and the Côte d'Or elephant would be opaque. At the hearing four prototypes were filed covering the Toblerone 100 gram bar, the Côte d'Or INTENSE 100 gram and 10 gram bars, and the Côte d'Or 47.5 gram banana snack bar.
[7] Kraft's concern is that the plastic film could be removed, say by a retailer who wanted to demonstrate he was selling the genuine product.
[8] It was left to me in open court to try and remove the plastic film. I could not remove the film with my fingernails. Perhaps it could be scraped away with a knife or other tool, or steamed off. I don't know why anyone would want to go to such trouble, or what shape the bear and elephant would be in after such an ordeal. Three of the four bars passed the test. The one which failed was the 100 gram Côte d'Or INTENSE. It failed in two respects. Although the elephant within the shield was covered over (there are five red shields), one elephant, the one in the front, at the top, is still visible in certain light. This seems to be because it is slightly embossed. Euro Excellence will have to go back to the drawing board on that one. The wrapper also includes a depiction of a piece of the chocolate bar in which the elephant is embedded. Although the elephant in that case is dark brown, while the other elephants are white, the artistic work is in the shape of the elephant, not its colour. The chocolate brown elephant will also have to be covered over.
[9] Euro Excellence also markets other sizes and shapes of Toblerone and Côte d'Or products. As long as the bear within the mountain and the elephant are covered over in the same fashion as the three exhibits referred to above, I am satisfied that the wrappers will not infringe. With regard to the Côte d'Or 100 gram INTENSE bar, and similar products, the chocolate brown elephant can be covered over the same way as the white elephants. As to embossed elephants, Côte d'Or will have to do something to ensure that the shape of the elephant is not visible. I also direct that samples of each and every Toblerone and Côte d'Or product be delivered to Kraft through its solicitors so that they may make their own determination as to whether the wrappers are non-infringing.
[10] I remain available should further directions be needed on the Côte d'Or 100 gram INTENSE bar, or the other products which were not exhibited.
[11] As the results were mixed, each party shall bear its own costs.
ORDER
THIS COURT ORDERS that the motion for re-consideration is dismissed. Euro Excellence is at liberty to cover up the copyrighted artwork in Toblerone and Côte d'Or packaging with opaque plastic film, provided that the shape of the said artwork cannot be seen.
"Sean Harrington"
Judge
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1821-02
STYLE OF CAUSE:
KRAFT CANADA INC.
KRAFTFOODS SCHWEIZ AG and
KRAFT FOODS BELGIUM SA
Applicants
and
EURO EXCELLENCE INC.
Respondent
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: June 8, 2004
REASONS FOR ORDER AND ORDER :
THE HONOURABLE MR. JUSTICE HARRINGTON
DATED: June 9, 2004
APPEARANCES:
Timothy Lowman FOR APPLICANTS
François Boscher FOR RESPONDENT
SOLICITORS OF RECORD:
Sim, Hughes, Ashton & McKay FOR APPLICANTS
Toronto, Ontario
François Boscher FOR RESPONDENT
Montréal, Quebec
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