Date:
20090623
Docket: T-1268-08
Citation: 2009 FC 661
Vancouver,
British Columbia, June 23, 2009
PRESENT: The Honourable Madam Justice Tremblay-Lamer
BETWEEN:
PEAK
INNOVATIONS INC.
Applicant
and
MEADOWLAND
FLOWERS LTD.
Respondent
REASONS FOR ORDER AND ORDER
[1]
The Plaintiff appeals
Prothonotary Lafrenière’s June 2, 2009 Order, in which he struck paragraphs
3-11, 35, 36, and 38 from the Plaintiff’s Amended Statement of Claim, on the
basis that a declaration of non-infringement of an industrial design registration
is not a cause of action within the jurisdiction of the Federal Court.
[2]
The
Plaintiff, by Statement of Claim dated August 29, 2008 and Amended Statement of
Claim dated October 24, 2008, began this action. The Plaintiff identifies the
genesis of this action as a letter written by counsel for the Defendant where
counsel for the Defendant alleges infringement of industrial designs and
copyright. The Amended Statement of Claim seeks, inter alia, declarations
that certain of the Plaintiff’s products do not infringe certain of the
Defendant’s industrial design registrations.
[3]
The Defendant
submits that the Plaintiff has based this action on an unreasonable and
untenable interpretation of two letters, which have never alleged infringement
of the industrial designs at issue in this action. To clarify the matter, Smart
and Bigger confirmed that the Defendant has not previously or at that time
alleged infringement of any of the industrial design registrations impugned in
the Statement of Claim and Amended Statement of Claim. It is against this
backdrop that Prothonotary Lafrenière rendered his Order of June 2, 2009.
[4]
The sole
issue on this appeal is whether the Federal Court has jurisdiction to entertain
a proceeding brought by a party for determinations and declarations of whether
that party’s products infringe industrial design registrations of another
party, in the absence of an
action for infringement.
[5]
The
jurisdiction of the Federal Court is statutory and exceptional, and must be
positively shown (R.W.
Blacktop Ltd. v. Artec Equipment Co. (1991), 39 C.P.R. (3d) 432 (F.C.T.D.)
at page 435), and in order to support a finding of jurisdiction, the following
three elements must exist (Canada (Human Rights Commission) v. Canadian
Liberty Net, [1998] 1 S.C.R. 626 at paragraph 8):
1) There must be an express statutory
grant of jurisdiction by the federal Parliament;
2) There must be an existing body of
federal law which is essential to the disposition of the case and which
nourishes the statutory grant of jurisdiction; and
3) The law on which the case is based
must be a “law of Canada” as the phrase is used in section 101 of
the Constitution Act, 1867.
[6]
Therefore,
without a statutory grant of jurisdiction for a cause of action seeking a
declaration of non-infringement, it is plain and obvious that the Federal Court
lacks jurisdiction to entertain such as proceeding, and the portions of the
Amended Statement of Claim seeking such relief must be struck.
[7]
The provisions of the
Industrial
Design Act, R.S.C. 1985, c. I-9 that do establish
causes of action are s. 15, s. 15.1, s. 15.2, s. 22, and s. 23. None establishes
a cause of action for non-infringement.
[8]
The Plaintiff relies
on s. 20(2) of the Federal Courts Act, R.S.C. 1985, c. F-7 to argue the
Federal Court has jurisdiction over declaratory relief in the form of a
declaration of non-infringement, since it has jurisdiction to address “any
remedy” – the Federal Court has broad jurisdiction to address any remedy relating
to industrial designs, and the jurisdiction extends to any remedy sought under
the overall law of industrial designs. I disagree.
[9]
Section 20(2) of the Federal
Courts Act only establishes jurisdiction for remedies where jurisdiction
for the underlying cause of action is established elsewhere in a statute. This
is supported by the analysis used in Radio Corporation of America v. Philco
Corporation (Delaware), [1966] S.C.R. 296 (S.C.C.); and Cellcor Corp. of
Canada Ltd. v. Kotacka (1976), 27 C.P.R. (2d) 68 (F.C.A.).
[10]
It is
plain and obvious that s. 20(2) of the Federal
Courts Act by itself
cannot establish jurisdiction for a cause of action of non-infringement of an
industrial design.
[11]
The Plaintiff further
relies on Rule 64 of the Federal Court Rules, SOR/98-106 to show the
Federal Court has jurisdiction to grant any declaratory relief. Rule 64,
however, will not confer jurisdiction for a cause of action on its own. Pieters
v. Canada (Attorney General), F.T.R. 227, 2004 FC 27 (F.C.), at
paragraph 17, confirms that Rule 64 speaks to remedy and does not establish
jurisdiction for a cause of action that is not otherwise established:
[17] In
my view, Rule 64 does not assist the Applicant. This Rule states that this
Court cannot refuse to hear a claim solely because a party seeks a declaration.
However, the Rule cannot operate in the absence of an underlying application.
Rule 64 speaks to relief and not to the proceedings. In other words, there must
be some basis on which the application is brought and not merely some abstract
desire to obtain clarification or a hammer with which to negotiate further. The
Court functions and provides judicial oversight in the face of some alleged
actions. Absent a factual foundation within the jurisdiction of the Court, remedies
are meaningless. In this case, the Court is declining to judicially review a
decision because its jurisdiction is ousted by the operation of the Collective
Agreement and PSSRA. The nature of the remedy sought by Mr. Pieters is a
secondary issue and need only be considered if this Court first satisfies
itself that it has the jurisdiction to review Ms. Brouillette's conduct.
[12]
The
legislative provisions submitted by the Plaintiff are therefore not able to
support the Plaintiff’s jurisdictional argument. It is therefore plain and
obvious that the Federal Court does not have jurisdiction over a cause of
action for non-infringement of an industrial design.
CONCLUSION
[13]
For the
above reasons, this appeal from Prothonotary Lafrenière’s June 2, 2009 Order,
in which Prothonotary Lafrenière struck paragraphs 3-11, 35, 36, and 38 from
the Plaintiff’s Amended Statement of Claim, is dismissed with costs to the
Defendant forthwith and in any event of the cause.
JUDGMENT
THIS COURT ORDERS that the appeal is dismissed with costs to the Defendant forthwith and in any
event of the cause.
“Danièle
Tremblay-Lamer”
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