Docket: T-1687-15
Citation:
2016 FC 1339
Ottawa, Ontario, December 07, 2016
PRESENT: The
Honourable Madam Justice McDonald
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BETWEEN:
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THOI BAO INC.
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Applicant
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and
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1913075 ONTARIO
LIMITED O/A VO MEDIA, TUAN THANH VO, AND TAM HOANG THANH TRAN
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Respondents
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JUDGMENT AND REASONS
[1]
THOI BAO Inc. [TB Inc. or Applicant] claims that
its rights under the Copyright Act, RSC, 1985, c C-42 and under the Trade-marks
Act, RSC, 1985, c T-13 were infringed by the Respondent, Tuan Thanh Vo [Mr.
Vo], who operated an infringing website. TB Inc. asks for an injunction and
damages.
[2]
TB Inc. is a Vietnamese language news company
offering news services across Canada through a number of platforms including
newspapers, television shows, radio, and online.
[3]
The claims against the Respondents, 1913075
Ontario Limited o/a Vo Media [Vo Media] and Tam Hoang Thanh Tran [Ms. Tran]
were resolved prior to the hearing of this matter. The hearing proceeded only
against Mr. Vo.
[4]
Mr. Vo requested an adjournment when the matter
was first scheduled to be heard in May 2016, to allow him additional time to
file evidence. However he did not file any evidence. When the matter came back
for this hearing, Mr. Vo attended the hearing in person, but did not offer any
evidence, other than to state he no longer owns the domain name of the
infringing website. Mr. Vo was not represented by legal counsel.
[5]
For the reasons that follow, the application of
TB Inc. is allowed and an injunction and damages are awarded against Mr. Vo.
I.
Background
[6]
TB Inc. relies upon the affidavit evidence of
its Publisher, President and Chief Executive Officer, Dat Tuan (David) Nguyen.
Mr. Nguyen states that THOI BAO means “time newspaper”.
He states that the company’s newspapers have an average circulation of 48,000
copies per week, with an average total readership across Canada of over 100,000
per issue. He states that TB Inc. has used a number of trade-marks in
association with its news services, including:
a)
THOI-BAO (registered in 1996; purportedly used
in Canada in association with newspapers since 1987);
b)
THOI BAO (applied-for mark; purportedly used in
Canada in association with: newspapers since 1987; radio since 2009; the
internet since 2012; and television since 2013);
c)
TBTV (applied-for mark; purportedly used in
Canada in association with television and the internet since 2013); and
d)
THOI BAO TV (copyrights asserted used in
association with television and the internet since 2013).
[7]
Mr. Nguyen explains that the company’s news
website, www.thoibao.com, was launched in 1999. Since 2012, it has streamed
audio and video, and self-produced television shows and newscasts. Between
January 2015 and October 2015, the website averaged around 45,000 visitors each
month. The company also has a Facebook page: “THOI BAO
– THE VIETNAMESE NEWSPAPER”, and in 2013, they launched the TBTV Daily
Show, a news webcast available on its website.
[8]
Mr. Vo and the Respondent Ms. Tran were
employees of TB Inc. In November 2013, the domain name www.thoibaotv.com was
registered by Mr. Vo or Ms. Tran, or both, without the consent or
knowledge of TB Inc. In 2014, the corporation Vo Media was created. Vo Media
provides online news in Canada in the Vietnamese language via the website:
www.thoibaotv.com, online news and media services in association with the trade-marks,
trade-names, Meta tags and “hidden text” THOI
BAO, TBTV, THOI BAO TV.
[9]
It is important to note that Vo Media
(www.vomedia.com) and the infringing website, share the same IP address
(192.254.233.43).
[10]
The infringing website is substantially similar
to TB Inc.’s website, www.thoibao.com, in the following ways:
a)
Prominent use of the term TBTV Online as the
website title;
b)
Audio and video streaming of television shows
and newscasts that were produced by TB Inc.;
c)
An Internet news portal featuring links to news
agency services;
d)
An online website with news, editorials and
opinions on current events;
e)
Meta tags incorporating the Mark THOI BAO
throughout its source code; and,
f)
Webcasts of news shows that were produced by TB
Inc.
[11]
A Facebook page titled THOI BAO TV was also
developed by Mr. Vo and / or Ms. Tran, which contained different links to the infringing
website.
[12]
Neither Ms. Tran nor Mr. Vo are authorized
licensees of THOI BAO, and they are not authorized to use, in whole or in part,
any of the TB Inc.’s Marks. Additionally, they are not authorized to reproduce,
adapt and / or publicly present TB Inc.’s cinematographic works. Ms. Tran’s and
Mr. Vo’s activities are also done without any payment or compensation to TB
Inc.
[13]
As there is no responding evidence before the
Court, this application is similar to an ex parte motion for default
judgment, where the allegations in the Notice of Application are taken as being
denied. TB Inc. therefore has the onus, on a balance of probabilities, to prove
that it is entitled to the relief claimed: Teavana Corporation v. Teayama Inc.,
2014 FC 372 at para 4 [Teavana Corp].
[14]
The following are the issues to be determined:
A.
Is Mr. Vo personally responsible for any
infringing activity?
B.
Has Mr. Vo engaged in an infringing activity
contrary to section 20 of the Trade-marks Act?
C.
Has Mr. Vo passed off TB Inc.’s trade-marks as
his own contrary to section 7(b) of the Trade-marks Act?
D.
Has Mr. Vo depreciated the goodwill of TB Inc.’s
trade-marks contrary to section 22 of the Trade-marks Act?
E.
Has Mr. Vo engaged in activity that violated TB
Inc.’s copyright pursuant to s. 27(1) of the Copyright Act?
F.
Has TB Inc. proven entitlement to damages and an
injunction?
II.
Analysis
A.
Is Mr. Vo personally responsible for any
infringing activity?
[15]
As a preliminary matter, this Court must
determine if Mr. Vo can be held personally responsible for the alleged
infringing activity of 1913075 Ontario Limited doing business as Vo Media.
[16]
For a finding of personal responsibility, there
must be a deliberate, wilful and knowing pursuit of a course of conduct that
was likely to constitute infringement or an indifference to the risk of
infringement, as opposed to the direction of the company in the ordinary course
of the personal Respondent’s relationship to it: Society of Composers,
Authors and Music Publishers of Canada v. 1007442 Ontario Ltd. (c.o.b. I Don
Knows), 2002 FCT 657 at para 19.
[17]
TB Inc. submits that a finding of personal
liability is warranted against Mr. Vo for the following reasons:
a)
Prior to incorporating Vo Media, and while
employed as a webmaster with TB Inc., Mr. Vo registered www.thoibaotv.com
without the company’s consent or knowledge;
b)
Mr. Vo was aware of the THOI-BAO family of Marks
from his employment with TB Inc.; and
c)
Mr. Vo failed to respond to the demands of TB
Inc. and attempted to conceal his activity.
[18]
Mr. Vo was employed as a television cameraman,
editor, supervisor, and webmaster with TB Inc. from August 31, 2013 until July
31, 2014.
[19]
It is alleged that Mr. Vo registered the domain
name www.thoibaotv.com on November 18, 2013, while he was still employed with
the company. Mr. Nguyen claims that Mr. Vo did not inform his former employer
of this act, nor did he have the consent of the company to do so.
[20]
According to Mr. Nguyen, after Mr. Vo and Ms.
Tran left the company, they launched Vo Media together in August 2014. A
Business Names Report attached to Mr. Nguyen’s affidavit indicates that the
name “Vo Media”, which is the business name of
the Respondent’s numbered company, which was registered on May 12, 2014. Ms.
Tran is listed as the sole director of Vo Media. However, according to Mr.
Nguyen, both Mr. Vo and Ms. Tran have publically acknowledged that they are
co-founders of the business. As proof, Mr. Nguyen presents two screenshots of a
YouTube video, dated September 2014 (Exhibit M), in which Ms. Tran states that
she and Mr. Vo are the co-founders. Mr. Nguyen has also adduced a THOI BAO
newspaper article, dated September 6, 2014, which covered the launch of Vo
Media in support of the company’s former employees (Exhibit N).
[21]
Based upon the evidence, I am satisfied that Mr.
Vo had a hands-on and personal involvement in the deployment of Vo Media and
its website development and content. Therefore, if TB Inc. can establish the
existence of infringing activity, Mr. Vo will be personally responsible.
B.
Has Mr. Vo engaged in an infringing activity
contrary to section 20 of the Trade-marks Act?
[22]
Section 19 of the Trade-marks Act grants
the owner of a trade-mark the exclusive right to use the mark in Canada.
Section 20 of the Trade-marks Act is triggered if someone else sells,
distributes or advertises wares or services with a confusing trade-mark or
trade-name.
[23]
The allegedly confusing activity by Mr. Vo is
the operation of the website www.thoibaotv.com. As compared to TB Inc.’s
registered website name www.thoibao.com.
[24]
The legal test for confusion was explained by
the Supreme Court of Canada [SCC] in Canada in Veuve
Clicquot Ponsardin v. Boutiques Cliquot Ltée,
2006 SCC 23 [Veuve Clicquot] at para 20:
The test to be applied is a matter of first
impression in the mind of a casual consumer somewhat in a hurry who sees the
[mark], at a time when he or she has no more than an imperfect recollection of
the [prior] trade-marks, and does not pause to give the matter any detailed consideration
or scrutiny, nor to examine closely the similarities and differences between
the marks.
[25]
In other words, it must be determined if, as a
matter of first impression, “a casual consumer somewhat
in a hurry” who sees the Respondents’ name or mark, and has no more than
an imperfect recollection of the Applicant’s trade-mark, would be likely to
think that the Respondents’ ware or services would be from the same source as
those of the Applicant. (Masterpiece Inc. v.
Alavida Lifestyles Inc., 2011 SCC 27 [Masterpiece]
at para 41.)
[26]
Section 6(5) of the Trade-marks Act
states that the Court must consider all the surrounding circumstances,
including the following factors, in determining whether trade-marks are
confusing:
a)
The inherent distinctiveness of the trade-marks
or trade-names and the extent to which they have become known;
b)
The length of time the trade-marks or
trade-names have been in use;
c)
The nature of the goods, services or business;
d)
The nature of the trade; and
e)
The degree of resemblance between the trade-marks
or trade-names in appearance or sound or in the ideas suggested by them.
[27]
In this regard, the SCC in Masterpiece
established that in applying the section 6(5) factors to the question of
confusion, it is generally appropriate to begin with the consideration of the
degree of resemblance between the marks or names, as this is a factor that is
often likely to have the greatest effect on the confusion analysis (Masterpiece,
para 49). If there is a strong degree of resemblance between the parties’ marks
or names, the question now becomes whether any of the other circumstances
reduce the likelihood of confusion to the point that confusion is unlikely to
occur (Masterpiece, para 104).
[28]
Here, the website name used by Mr. Vo is
THOIBAO, while TB Inc.’s registered mark is THOI-BAO. There can be no doubt
that these two trade-marks have a strong, in fact an almost identical,
resemblance. Mr. Vo has therefore taken a substantial part of TB Inc.’s
distinctive THOI-BAO trade-mark.
[29]
I agree with the Applicant that the remaining
confusion considerations listed in section 6(5) of the Trade-marks Act
do not minimize the likelihood of confusion. First, the Applicant’s Mark
THOI-BAO has been registered and in use since 1996 and is very well known
within the Vietnamese-speaking Canadian community as both a newspaper, and more
recently, a multi-media and online news company. The www.thoibaotv.com website,
on the other hand, has been operating for a short period of time. As well,
there is no evidence as to whether the infringing website became well known.
Additionally, not only is the nature of the goods, services or business
similar, but the customers and communities targeted, ethnic news media in
Canada and Vietnamese-speaking Canadian community, are the same.
[30]
For the reasons above, I am of the opinion that
a casual consumer seeing the website THOIBAO and having no more than an
imperfection recollection of THOI-BAO’s trade-mark, would likely be confused
regarding the source of those services.
[31]
I therefore conclude that this conduct is an
infringement of TB Inc.’s rights to the exclusive use of its registered
trade-mark, contrary to section 20 of the Trade-marks Act.
C.
Has Mr. Vo passed off TB Inc.’s trade-marks as
his own contrary to section 7(b) of the Trade-marks Act?
[32]
Section 7(b) of the Trade-marks Act
prohibits conduct which directs public attention to their wares, services or
business in such a way as to cause or likely to cause confusion. Here, the
question is whether Mr. Vo directed attention to his website away from TB
Inc.’s wares or services to his own website.
[33]
In Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992]
3 S.C.R. 120, the SCC defined three necessary components to a passing-off
action: 1) the existence of goodwill 2) deception of the public due to
misrepresentation and 3) actual or potential damage to the Applicant (see page
132). This statement was confirmed in Kirkbi AG v. Ritvik Holdings Inc., 2005
SCC 65 (see paras 66-69).
[34]
TB Inc. argues that the THOI BAO family of Marks
has the established goodwill in respect of the distinctiveness of its goods,
wares and services. The second component, creating confusion to the public, is
easy to establish given the almost identical use of wording. The last
component, which is the matter of determining if the Applicant has or feasibly
will experience damages due to Mr. Vo’s activities, has also been established.
[35]
I am satisfied that TB Inc. has established
passing off contrary to section 7(b) of the Trade-marks Act.
D.
Has Mr. Vo depreciated the goodwill of TB Inc.’s
trade-marks contrary to section 22 of the Trade-marks Act?
[36]
Under this provision of the Trade-marks Act,
the issue for consideration is whether Mr. Vo’s actions have or are likely to
have the effect of depreciating the goodwill value of the Applicant’s
trade-mark.
[37]
The SCC in Veuve Clicquot determined at
para 46 that a section 22 infringement of the Trade-marks Act has four
elements:
a)
That a claimant’s registered trade-mark was used
by the defendant in connection with wares or services;
b)
That the claimant’s registered trade-mark is sufficiently
well known to have significant goodwill attached to it;
c)
That the claimant’s Mark was used in a manner likely
to have an effect on that goodwill; and
d)
That the likely effect would be to
depreciate the value of its goodwill.
[38]
Here, it is apparent that Mr. Vo used TB Inc.’s
registered Mark THOI-BAO in connection with his wares or services. The mark is
well known, having been registered since 1996 with a circulation of 48,000
copies of the THOI BAO newspaper. Mr. Vo used the THOI BAO’s trade-mark for the
name of a website of inferior quality, which projects an unprofessional
character which is therefore likely to depreciate the value of the goodwill
attached to TB Inc.’s trade-mark. TB Inc.’s trade-mark has developed a strong
reputation and goodwill in Canada in the field of Vietnamese-language news
services. In fact, TB Inc. produced evidence of awards and recognition it has
received for its community involvement.
[39]
I therefore find that Mr. Vo’s activities
contravene section 22(1) of the Trade-marks Act.
E.
Has Mr. Vo engaged in activity that violated TB
Inc.’s copyright pursuant to s. 27(1) of the Copyright Act?
[40]
TB Inc. claims that its presumed copyright in
the daily news program was infringed by Mr. Vo when he played two of its daily
shows on his website.
[41]
When a copyright has not been registered,
paragraph 34.1(1)(a) of the Copyright Act states that a copyright is
presumed to subsist in the work at issue, unless the contrary is proven. When a
copyright is presumed to subsist, originality is also presumed in the work.
(see Positive Attitude Safety System Inc. v.
Albian Sands Energy Inc., 2004 FC 1022 at
para 35.)
[42]
Here, since TB Inc. is the first author and
broadcaster of the TBTV Daily Shows, it is also the owner of the copyright in
these works.
[43]
The evidence shows that Mr. Vo’s website,
www.thoibaotv.com, broadcasted the identical TBTV Daily Shows on at least two
occasions. Mr. Vo has not filed any evidence to rebut the presumption.
Therefore, copyright in these productions is presumed to exist.
[44]
By broadcasting the TBTV Daily Shows on the
www.thoibaotv.com website, Mr. Vo violated TB Inc.’s cinematographic copyright
contrary to the Copyright Act.
F.
Has TB Inc. proven entitlement to damages and an
injunction?
(1)
Trade-mark Infringement
[45]
TB Inc. submits that damages are presumed to
result from a finding of infringement, even where there is no proof of loss of
business. As Mr. Vo has not produced any evidence, it is impossible to
determine what, if any, revenues he has earned with the use of the THOI BAO
name.
[46]
In the circumstances, TB Inc. argues that the
appropriate convention for assessing its quantum of damages is the reasonable
fees it would have charged Mr. Vo for the use of its Mark THOI BAO. TB Inc.
claims $22,500, based in part on the $15,000 minimum annual royalty that it
would have charged for the use of its Mark in association with web based
Vietnamese-language news (Pick v. 1180475 Alberta Ltd (Queen of Tarts),
2011 FC 1008 at 49-52; Aquasmart Technologies Inc. v. Klassen, 2011 FC
212 at para 71.)
[47]
Based on the annual royalty approach proposed, I
find that TB Inc. is entitled to the sum of $15,000.00 for trade-mark
infringement by Mr. Vo.
(2)
Copyright Infringement
[48]
TB Inc. claims $20,000 for the two incidents of
alleged copyright infringement involving the TBTV Daily Shows. As there is no
evidence of profit, TB Inc. has elected to recover an award of statutory
damages under paragraph 38.1(1)(a) of the Copyright Act.
[49]
The overarching mandate in assessing statutory
damages is to arrive at a reasonable assessment in all of the circumstances in
order to yield a just result: Telewizja Polsat S.A. v. Radiopol Inc.,
2006 FC 584 at para 37.
[50]
Here, I am satisfied that an award of $5,000 per
incident, for a total of $10,000.00, is appropriate given the wilful and
knowing conduct of Mr. Vo in infringing TB Inc.’s copyright (see Canadian
Standards Association v. P.S. Knight Co, 2016 FC 294 at para 61).
(3)
Punitive Damages
[51]
TB Inc. requests $15,000 in punitive damages and
relies upon Mitchell Repair Information Company L.L.C. v. Long, 2014 FC
562. TB Inc. submits that the facts of that case are similar to the case at
hand.
[52]
Punitive damages are intended to punish a
defendant for malicious, oppressive and high-handed misconduct that offends the
Court's sense of decency see: Louis Vuitton Malletier S.A. v. Yang, 2007
FC 1179 at para 47.
[53]
Here, the only factor weighing in favour of the
punitive damages is that Mr. Vo previously worked for TB Inc. and therefore had
knowledge of the company’s intellectual property. However, there is no evidence
of malice, nor is there any evidence suggesting the conduct persisted over a
lengthy period of time. It appears that www.thoibaotv.com went offline within
two months of receipt of a demand letter. There is no evidence that www.thoibaotv.com
was profitable.
[54]
Therefore, this case is not similar to Mitchell
Repair Information, and I decline to award punitive damages.
(4)
Injunction
[55]
TB Inc. is entitled to an injunction against Mr.
Vo as follows:
- Tuan Thanh Vo or
his employees, agents or otherwise, are hereby permanently enjoined from:
a)
Selling, distributing, or advertising wares or
services in association with THOI-BAO registered trade-mark or with any other
trademark or trade-name that is confusing with THOI-BAO trade-mark, including
without limitation any mark or name that is or that includes the element “THOI BAO”, “TBTV”, or “THOI BAO TV”;
b)
Directing public attention to its wares,
services or business in such a way as to cause or be likely to cause confusion
in Canada between its wares, services or business and the wares, services or
business of THOI-BAO contrary to section 7(b) of the Trade-marks Act,
including without limitation by adopting, using or promoting “THOI BAO”, “TBTV” or “THOI BAO TV”
as, or as part of, any trade-mark, trade-name, trading style, Meta tags (or
other internet search engines, optimization tools or devices), corporate name,
business name, domain name (including any active or merely redirecting domain
name);
c)
Using any trade-mark registered by THOI-BAO in a
manner that is likely to have the effect of depreciating the value of the
goodwill attaching thereto, contrary to section 22(1) of the Trade-marks
Act;
d)
Downloading, reproducing and distributing the
Works, and;
e)
Authorizing, inducing or assisting others to do
any of the aforesaid acts.
- Tuan Thanh Vo
shall transfer to THOI-BAO ownership and all rights of access,
administration and control for and over the domain name www.thoibaotv.com,
together with any other domain name, Facebook account, Twitter account, or
other social media accounts registered to or in control of Tuan Thanh Vo
containing “THOI BAO”, “TBTV”, or “THOI BAO TV”
or any confusingly similar trade-mark, and shall otherwise take any and
all further steps necessary to complete such transfer in a timely manner,
thereafter including directing the applicable Registrar(s) to transfer
ownership and all rights of access, administration and control for and
over all such domain names to THOI-BAO.
III.
Costs
[56]
TB Inc. shall also have its costs in the amount
of $7,500.00.
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