Film City Entertainment Ltd. v. Golden Formosa Entertainment Ltd., 2006 FC 1149

 

 

 

 

Date: 20060927

Docket: T-337-04

Citation: 2006 FC 1149

Halifax, Nova Scotia, September 27, 2006

PRESENT:     The Honourable Mr. Justice O'Keefe

 

BETWEEN:

FILM CITY ENTERTAINMENT LTD.,

MEI AH FILM PRODUCTION CO. LTD., and

MEI AH DEVELOPMENT COMPANY LTD.

Plaintiffs

and

 

GOLDEN FORMOSA ENTERTAINMENT LTD.,

CHIEN-WEN CHEN, HUI MEI CHEN,

And HUI-CHENG CHEN

 

Defendants

 

REASONS FOR ORDER AND ORDER

 

O’KEEFE J.

 

[1]               Film City Entertainment Ltd., Mei Ah Film Productions Co. Ltd., and Mei Ah Development Company Ltd., (the plaintiffs), commenced an action claiming copyright infringement by the defendants. This is a motion by the plaintiffs for summary judgment against the defendants, pursuant to Federal Court Rules, 1998, S.O.R. 198-106, Rule 216. The plaintiffs claim that the defendants have reproduced and distributed to the public a film in which copyright is owned and licenced by the plaintiffs.

 

[2]               The plaintiffs request the following relief:

That the plaintiffs be granted summary judgment against the defendants, including:

1.         A declaration that copyright subsists in Canada in the film “Diva, Ah Hey!” (the work);

2.         A declaration that Mei Ah Film Production Co. Ltd. is the owner of the copyright in the work;

3.         A declaration that Mei Ah Development Company Ltd. is the first mesne rightsholder in the work and holds a licence under copyright for the work from Mei Ah Film Production Co. Ltd.;

4.         A declaration that Film City Entertainment Ltd. holds a licence under copyright for the Film from Mei Ah Development Company Ltd. which is protected by the Copyright Act, R.S.C. 1985, c. C-42 (the Act);

5.         A declaration that the defendants have infringed the plaintiffs’ rights in the work as described herein;

6.         A permanent injunction restraining the defendants and their respective directors, officers, employees, servants, agents, assigns, and successors, from, directly or indirectly, infringing copyright in the work by any one or more of the following means: reproducing all or a substantial part of the work in a material form; selling or renting out, or by way of trade distributing, exposing or offering for sale or rental, or exhibiting in public, or distributing to such an extent as to prejudicially affect the plaintiffs’ rights, or possessing for the purpose of doing any of those acts described in this subparagraph, unless the plaintiff, Film City Entertainment Ltd.’s licence has been obtained and paid for;

7.         The following damages jointly and severally against the defendants:

(a)        statutory damages pursuant to section 38.1 of the Act in the amount of $10,000; and

(b)        exemplary and aggravated damages in the amount of $7,000;

8.         Pre-judgment interest calculated against the statutory damages of $10,000 from June 13, 2003, pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c-79;

9.         Post-judgment interest pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c-79, commencing from the date of judgment;

10.       Costs of this action in the amount of $3,840.00 in costs plus GST, and $667.86 for disbursements.

 

Background

 

[3]               The plaintiffs have commenced an action for copyright infringement against the defendants. The plaintiffs allege that Golden Formosa Entertainment Limited (the corporate defendant), distributed to the general public, unauthorized counterfeit versions of a film in which the plaintiffs own the copyright in Canada. The plaintiffs also allege that the personal defendants, while acting in their capacities as either managers or directors of the corporate defendant, knowingly authorized and ordered the infringement.

 

[4]               The film in question is a Chinese-language motion picture entitled (in English), “Diva, Ah Hey!” (the work) with accompanying sound track. The work is distributed in Canada by Film City Entertainment Ltd. (Film City) in various audio visual formats, including VHS video cassette tape, VCD and DVD formats.

 

[5]               Film City owns the exclusive right in Canada to reproduce, distribute, sell, rent and offer for sale or rent the work, such right having been obtained by written exclusive licence from the respective owners of the copyright.

 

[6]               Copyright exists in the work in Canada.

 

[7]               The affidavit evidence of Patrick Mak establishes that he attended at the premises of the corporate defendant on June 13, 2003, and rented a video cassette of a copy of what he believed to be the Chinese language film with the English title, “Diva, Ah Hey!”.

 

[8]               The affidavit evidence of Michael Leung establishes that he viewed the film and stated it was a crude and counterfeit form of the work.

 

[9]               The defendant, Hui Mei Chen orders and procures movie products for the corporate defendant. In the past, this defendant purchased movies from Film City.

 

[10]           The affidavit evidence of Mr. Leung also states that the defendants, Chien-Wen Chen and Hui Mei and Hui-Cheng Chen are “family members who share actively in the management and operation of the premises, including the principal activities of the corporate defendant which involve obtaining and distributing Chinese language movies and television shows (including the work) to the general public”.

 

Issue

 

[11]           Should summary judgment be granted in this case?

 

Analysis and Decision

 

[12]           In relation to summary judgments, Rules 213 to 218 of the Federal Courts Rules, 1998, apply and can be found in the attached annex.

 

[13]           The plaintiffs also rely on sections 5 and 27 and subsections 38.1(5), 38.1(7), 39(2) and 53(2) of the Copyright Act, R.S.C. 1985, c. C-42.

 

[14]           Madam Justice Tremblay-Lamer in Granville Shipping Co. v. Pegasus Lines Ltd. S.A. et al. (1996) 111 F.T.R. 189 (F.C.T.D.), summarized the general principles that apply in applications for summary judgment as follows:

[8]        I have considered all of the case law pertaining to summary judgment and I summarize the general principles accordingly:

 

1.         the purpose of the provisions is to allow the court to summarily dispense with cases which ought not proceed to trial because there is no genuine issue to be tried (Old Fish Market Restaurants v. 1000357 Ontario Inc. et al.), at p. 222;

 

2.         there is no determinative test (Feoso Oil Limited v. Saria (1995), 184 N.R. 307 (F.C.A.) but Stone, J. A., seems to have adopted the reasons of Henry, J., in Pizza Pizza Ltd. v. Gillespie (Pizza Pizza) (1990), 75 O.R. (2d) 225 (Gen. Div.). It is not whether a party cannot possibly succeed at trial, it is whether the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial;

 

3.         each case should be interpreted in reference to its own contextual framework (Blyth, supra, and Collie, supra);

 

4.         provincial practice rules (especially rule 20 of the Ontario Rules) can aid in interpretation (Feoso, supra, and Collie, supra);

 

5.         this court may determine questions of fact and law on the motion for summary judgment if this can be done on the material before the court (this is broader than rule 20 of the Ontario Rules of Civil Procedure) (Patrick);

 

6.      on the whole of the evidence, summary judgment cannot be

granted if the necessary facts cannot be found or if it would be unjust to do so (Pallman, supra, and Sears, supra);

 

7.         in the case of a serious issue with respect to credibility, the case should go to trial because the parties should be cross-examined before the trial judge (Forde, supra, and Sears, supra). The mdere existence of apparent conflict in the evidence does not preclude summary judgment; the court should take a “hard look” at the merits and decide if there are issues of credibility to be resolved (Stokes, supra).

 

 

 

[15]            I have considered the material filed on the motion, the submissions made by counsel for the plaintiffs and the submissions made by Ms. Chen on behalf of the defendants. I am of the view that summary judgment ought to be granted in this case. The plaintiffs have established that they own copyright in the work and that the copyright is registered in Canada. They have also shown that the defendants rented a counterfeit version of the work to Mr. Mak. With respect to the liability of the personal defendants, the affidavit evidence of Michael Leung is referred to in paragraph 46 of the plaintiffs’ memorandum of fact and law. In his affidavit, Michael Leung stated that the defendant Hui Mei Chen, as a long time director and manager of the corporate defendant, was aware of the existence of copyright and the plaintiffs’ rights in the work. Michael Leung also stated at paragraph 33 of his affidavit:

In the within action, the personal defendants all share the family name Chen. To the best of my belief, for the reasons cited above, I believe that they are all family members who share actively in the management and operation of the Premises, including the principal activities of the Corporate Defendant which involve obtaining and distributing Chinese language movies and television shows (including the Film) to the general public.

 

[16]           The defendants filed a defence to the statement of claim but the defence was a bare denial that copyright subsists in the work and a denial that the plaintiffs did the acts alleged. The jurisprudence of this Court has established that mere denial is not a sufficient pleading in allegations of copyright infringement (see Video Box Enterprises Inc. v. Lam, 2006 FC 546 at paragraph 23).

 

[17]           Applying the general principles outlined in Granville Shipping, I am of the view that summary judgment should be granted as there is no genuine issue to be tried. There is no issue as to credibility and the necessary facts are present to grant summary judgment.

 

[18]           The plaintiffs have elected to claim statutory damages.

 

[19]           The plaintiffs’ motion is granted as follows:

Summary judgment is granted against the defendants, including:

1.         A declaration that copyright subsists in Canada in the work “Diva, Ah Hey!”;

            2.         A declaration that Mei Ah Film Production Co. Ltd. is the owner of the copyright in the work;

            3.         A declaration that Mei Ah Development Company Ltd. is the first mesne rightsholder in the work and holds a licence under copyright for the work from Mei Ah Film Production Co. Ltd.;

4.         A declaration that Film City Entertainment Ltd. holds a licence under copyright for the work from Mei Ah Development Company Ltd. which is protected by the Copyright Act, R.S.C. 1985, c. C-42;

5.         A declaration that the defendants have infringed the plaintiffs’ rights in the work;

6.         A permanent injunction restraining the defendants and their respective directors,

officers, employees, servants, agents, assigns, and successors, from, directly or indirectly, infringing copyright in the work by any one or more of the following means: reproducing all or a substantial part of the work in a material form; selling or renting out, or by way of trade distributing, exposing or offering for sale or rental, or exhibiting in public, or distributing to such an extent as to prejudicially affect the plaintiffs’ rights, or possessing for the purpose of doing any of those acts described in this subparagraph, unless the plaintiff Film City Entertainment Ltd.’s licence has been obtained and paid for.

 

[20]           With respect to damages, I am not prepared to grant statutory damages in the amount of $10,000. In assessing the amount of statutory damages to be awarded, I have considered all relevant facts including the good faith or bad faith of the defendants, the conduct of the defendants before and during the proceedings and the need to deter other infringements of the copyright in question. In particular, I have considered the information outlined in paragraph 51 of the plaintiffs’ memorandum of fact and law. In particular, I note the defendants’ involvement in similar proceedings, attitude toward the judicial process and high level of sophistication. I have also taken into account the plaintiff’s submissions regarding the obviously counterfeit nature of the recording, the defendants’ continuing copyright infringement and evidence that the defendant has profited from the copyrighted work at the plaintiffs’ expense. Based on the facts of this case, I am prepared to award statutory damages in the amount of $5,000.

 

[21]           I am not prepared to award exemplary and aggravated damages.

 

[22]           With respect to costs, I will award the plaintiffs’ costs in the amount of $4,391.46 as claimed, as I believe that amount is reasonable on the facts of this case.

 

[23]           The plaintiffs are awarded pre-judgment interest calculated against the statutory damages of $5,000 from June 13, 2003 pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c. 79.

 

[24]           The plaintiffs are awarded post-judgment interest pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c.79, commencing from the date of judgment.

 

 

 

ORDER

 

[25]                       IT IS ORDERED that summary judgment is granted against the defendants,

including:

1.         A declaration that copyright subsists in Canada in the work “Diva, Ah Hey!”;

            2.         A declaration that Mei Ah Film Production Co. Ltd. is the owner of the copyright in the work;

            3.         A declaration that Mei Ah Development Company Ltd. is the first mesne rightsholder in the work and holds a licence under copyright for the work from Mei Ah Film Production Co. Ltd.;

            4.         Film City Entertainment Ltd. holds a licence under copyright for the work from Mei Ah Development Company Ltd. which is protected by the Copyright Act, R.S.C. 1985, c. C-42;

5.         A declaration that the defendants have infringed the plaintiffs’ rights in the work as

described herein.

6.         A permanent injunction restraining the defendants and their respective directors,

officers, employees, servants, agents, assigns, and successors, from, directly or indirectly, infringing copyright in the work by any one or more of the following means: reproducing all or a substantial part of the work in a material form; selling or renting out, or by way of trade distributing, exposing or offering for sale or rental, or exhibiting in public, or distributing to such an extent as to prejudicially affect the plaintiffs’ rights, or possessing for the purpose of doing any of those acts described in this subparagraph, unless the plaintiff, Film City Entertainment Ltd.’s licence has been obtained and paid for.

7.         Statutory damages against the defendants jointly and severally in the amount of

$5,000.

8.         Pre-judgment interest calculated against the statutory damages of $5,000 from June

13, 2003 pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c.79.

            9.         Post-judgment interest pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c. 79, commencing from the date of judgment.

10.       Costs in the amount of $4,391.46.

 

 

 

“John A. O’Keefe”

ANNEX

 

 

            Rules 213 to 218 of the Federal Court Rules, 1998 state as follows:

 

 

 

FEDERAL COURT

 

SOLICITORS OF RECORD

 

 

 

DOCKET:                                          T-337-04

 

STYLE OF CAUSE:                          FILM CITY ENTERTAINMENT LTD. et al

 

                                                            - and -

 

                                                            GOLDEN FORMOSA ENTERTAINMENT LTD. et al

 

PLACE OF HEARING:                    Vancouver, British Columbia

 

DATE OF HEARING:                      March 27, 2006

 

REASONS FOR ORDER

AND ORDER OF:                            O’KEEFE J.

 

DATED:                                             September 27, 2006

 

 

 

APPEARANCES:

 

Trevor Kaatz	FOR THE PLAINTIFFS
Hui Mei Chen	SELF-REPRESENTED FOR THE DEFENDANTS

 

SOLICITORS OF RECORD:

 

Boughton Law Corporation Vancouver, British Columbia	FOR THE PLAINTIFFS
Hui Mei Chen Burnaby, British Columbia	FOR THE DEFENDANTS