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Federal Court
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Cour fédérale
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Date: 20090909
Docket: T-1378-08
Citation: 2009
FC 883
Ottawa, Ontario,
September 9, 2009
PRESENT: The Honourable Mr. Justice Kelen
BETWEEN:
RICHARD
KOSLOWSKI
Plaintiff
and
HOGAN SCOTT COURRIER
carrying on business as
GEEKS GALORE COMPUTER CENTER
Defendant
REASONS FOR ORDER AND ORDER
[1]
This is a
motion by the Plaintiff Richard Koslowski for summary judgment in an action for
a breach of copyright and not trademark since the Defendant and Plaintiff
operate in completely different markets. The Plaintiff is seeking a declaration
of infringement of his copyright by the Defendant, a permanent injunction,
delivery or destruction of all infringing articles and materials, and damages
pursuant to ss. 2, 2.2, 3, 5, 6, 13(1), 14.1, 14.2, 27, 28.1, 28.2, 34(1)-(3),
34.1, 35, 38, and 53 of the Copyright Act, R.S.C. 1985, c. C-42 as
amended. The Plaintiff alleges that the Defendant infringed his copyright in the
“THE3GEEKS” characters depicted in the motion by the
Defendant reproducing the image on internet web pages and
various articles and materials used in the Defendant’s business.
FACTS
[2]
The
Plaintiff is an artist of U.S. nationality residing in the state of Wisconsin in the U.S. The Plaintiff states in his affidavit that
he is the author and originator of “THE3GEEKS” characters which are featured in
comic books.
[3]
The
Defendant is an individual carrying on “a small computer sales/repair” business
as Geeks Galore Computer Center in Marmora, Ontario [Statement of Defence, para 1].
[4]
The
Defendant was at all material times the owner of Geeks Galore Computer Centre
in Mamora, Ontario [Statement of Defence]. The Court takes
judicial notice of the fact that the Village of Marmora is at about halfway between Toronto and Ottawa on Ontario Highway No. 7.
[5]
The
Plaintiff commenced this action for copyright infringement and trademark
passing off by Statement of Claim on September 5, 2008. The Defendant filed a
Statement of Defence on October 3, 2008 denying the Plaintiff’s allegations.
[6]
The
Plaintiff states that since at least 2006 the Defendant has displayed the
Infringing Image as depicted at para. 9 of the Plaintiff’s affidavit on the
Defendant’s internet homepage, other websites, invoices, business cards, and
shirts worn by sales staff. The Plaintiff states at para. 10 of
his affidavit that “THE3GEEKS” characters as depicted in the
motion and the Infringing Image as depicted at para. 10 of the affidavit are
identical or substantially similar.
[7]
The
Plaintiff attached to his affidavit printouts of the Defendant’s web pages that
bear the Infringing Image on the body of the web pages or in pictures that show
staff members wearing shirts that bear the Infringing Image [Exhibit B to the
Plaintiff’s Affidavit].
[8]
The
Plaintiff states that after receiving the Statement of Claim the Defendant removed
the Infringing Image from his home page but not from
http://geeksgaloreca.tripod.com/ or the Defendant’s forum webpage [Exhibits B
and C of the Plaintiff’s affidavit].
[9]
The
Plaintiff subsequently brought this motion for summary judgement for the
copyright infringement allegations in his Statement of Claim.
ISSUE
[10]
The
issue in this proceeding is whether summary judgement should be granted.
LAW
AND JURISPRUDENCE ON SUMMARY JUDGMENT
The Test for Summary Judgment
[11]
Rule
213(1) of the Federal Courts Rules allows a Plaintiff in an action to
bring a motion for summary judgment after the Defendant has filed a Statement
of Defence.
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Where
available to plaintiff
213. (1) A
plaintiff may, after the defendant has filed a defence, or earlier with leave
of the Court, and at any time before the time and place for trial are fixed,
bring
a motion for summary
judgment on all or part of the claim set out in the statement of claim.
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Requête du demandeur
213. (1) Le
demandeur peut, après le dépôt de la défense du défendeur — ou avant si la
Cour l’autorise — et avant que l’heure, la date et le lieu de l’instruction
soient fixés, présenter une requête pour obtenir un jugement sommaire sur
tout ou partie de la réclamation contenue dans la déclaration.
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[12]
Rule 214
of the Federal Courts Rules requires the parties to serve and file a
notice of motion and moving motion record and a responding motion record
respectively.
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Obligations of
moving party
214. (1) A
party may bring a motion for summary judgment in an action by serving and
filing a notice of motion and
motion record at
least 20 days before the day set out in the notice for the hearing of the
motion.
Obligations of
responding party
(2) A party served
with a motion for summary judgment shall serve and file a respondent's motion
record not later than 10 days before the day set out in the notice of motion
for the hearing of the motion.
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Obligations du
requérant
214. (1) Toute
partie peut présenter une requête pour obtenir un jugement sommaire
dans une action en
signifiant et en déposant un avis de requête et un dossier de requête
au moins 20 jours
avant la date de l’audition de la requête indiquée dans l’avis.
Obligations de
l’autre partie
(2) La partie qui
reçoit signification d’une requête en jugement sommaire signifie
et dépose un dossier
de réponse au moins 10 jours avant la date de l’audition de la requête
indiquée dans l’avis de requête.
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[13]
Rule 215
of the Federal Courts Rules states that a response to a motion for
summary judgement shall not rest on mere denials of the allegations in the
Statement of Claim.
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Mere denial
215. A
response to a motion for summary judgment shall not rest merely on
allegations
or denials of the
pleadings of the moving party, but must set out specific facts showing that
there is a genuine issue for trial.
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Réponse suffisante
215. La
réponse à une requête en jugement sommaire ne peut être fondée uniquement sur
les allégations ou les dénégations contenues dans les actes de procédure
déposés par le requérant. Elle doit plutôt énoncer les faits précis
démontrant l’existence d’une véritable question litigieuse.
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[14]
Rule 216
of the Federal Courts Rules provides that the Court may grant summary
judgment where there is not genuine issue for trial or the only genuine issue
is a question of law, or the only genuine issue for trial is the amount of
damages to be assessed:
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Where no
genuine issue for trial
216. (1) Where
on a motion for summary judgment the Court is satisfied that there is no genuine
issue for trial with respect to a claim or defence, the Court shall grant
summary judgment accordingly.
Genuine issue of amount or question of law
(2) Where on a
motion for summary judgment the Court is satisfied that the only
genuine issue is
(a)
the amount to which the moving party is entitled, the Court may order a trial
of that issue or grant summary judgment with a reference under rule 153 to
determine the amount; or
(b)
a question of law, the Court may determine the question and grant summary
judgment accordingly.
Summary judgment
(3) Where on a
motion for summary judgment the Court decides that there is a genuine issue
with respect to a claim or defence, the Court may nevertheless grant summary
judgment in favour of any party, either on an issue or generally, if the
Court is able on the whole of the evidence to find the facts necessary to
decide the questions of fact and law.
…
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Absence de véritable
question litigieuse
216. (1)
Lorsque, par suite d’une requête en jugement sommaire, la Cour est convaincue
qu’il n’existe pas de véritable question litigieuse quant à une déclaration
ou à une défense, elle rend un jugement sommaire en conséquence.
Somme d’argent ou point de droit
(2) Lorsque, par
suite d’une
requête en jugement
sommaire, la Cour est convaincue que la seule véritable question litigieuse
est
a) le
montant auquel le requérant a droit, elle peut ordonner l’instruction de
la
question ou rendre un jugement sommaire assorti d’un renvoi pour
détermination
du
montant conformément à la règle 153;
b) un point de droit, elle peut statuer sur celui-ci et
rendre un jugement sommaire en conséquence.
Jugement de la Cour
(3) Lorsque, par
suite d’une requête en jugement sommaire, la Cour conclut qu’il existe une
véritable question litigieuse à l’égard d’une déclaration ou d’une défense,
elle peut néanmoins rendre un jugement sommaire en faveur d’une partie, soit
sur une question particulière, soit de façon générale, si elle parvient à
partir de l’ensemble de la preuve à dégager les faits nécessaires pour
trancher les questions de fait et de droit.
…
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[15]
In Rachelex
Holdings Inc. v. W & M Wire and Metal Products Ltd., 2007 FC 502, 15
A.C.W.S. (3d) 629, I set out the test for summary judgment at para. 8 (citing
my decision in Spenco Medical Corp. v. Emu Polishes Inc., 2004 FC 963 at
paras. 6-8):
...The Court is not to grant summary judgment
where it is shown that there is a genuine issue for trial. However, Rule 216(3)
specifically permits this Court to grant summary judgment even where there is a
genuine issue for trial so long as the
Court "is able on the whole of the evidence to find the facts necessary to
decide the questions of fact and law" …
[16]
In Granville
Shipping Co. v. Pegasus Lines Ltd. S.A., [1996] 2
F.C. 853
(F.C.T.D.), Madam Justice
Tremblay-Lamer set out the general principles applicable to a motion for
summary judgment at paragraph 8:
[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 Ltd. v. 1000357 Ontario Inc. et al., [1994]
F.C.J. No. 1631, 58 C.P.R.
(3d) 221 (T.D.));
2. there is no determinative test
[...] but Stone J.A. seems to have adopted the reasons of Henry J. in Pizza
Pizza Ltd. v. Gillespie [(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 [...];
4. provincial practice rules
(especially Rule 20 of the Ontario Rules of Civil Procedure, [R.R.O. 1990, Reg.
194]) can aid in interpretation [...];
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 [...];
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 [...] ;
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 [...] The mere 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.
[17]
The
Federal Court of Appeal affirmed this test in ITV Technologies Inc. v. WIC
Television Ltd., 2001 FCA
11, [2001]
F.C.J. No. 400
(F.C.A.), and quoted it with approval in MacNeil Estate v. Canada (Indian
and Northern Affairs Department), 2004 FCA 50, 316 N.R. 349, wherein the
Court provided the guidelines specifically with respect to the application of
Rule 216(3) at paras. 32-29. I summarized these guidelines in Rachelex
Holdings, supra, at para. 8 as follows:
1. where an issue of
credibility arises from evidence presented, the case should not be decided on summary judgment
under rule 216(3) but rather should go to trial because the parties should be
cross-examined before the trial judge (see paragraph 32 of MacNeil
Estate);
2. under rule 216(3),
motions judges can only make findings of fact or law provided the relevant
evidence is available on the record and does not involve a "serious"
question of fact or law which turns on the drawing of inferences (see paragraph
33 of MacNeil Estate);
3. Rule 216(3) permits a
judge on a motion for summary judgment, after finding that a
"genuine issue" exists, to conduct a trial on the affidavit evidence
with a view to determining the issues in the action. However, this is not
always possible, particularly where there are conflicts in the evidence, where
the case turns on the drawing of inferences or where serious issues of
credibility are raised (see paragraph 46 of MacNeil Estate);
4. Parties responding to
a motion for summary judgment do
not have the burden of proving all of the facts in their case; rather ...
responding parties have only an evidentiary burden to put forward evidence
showing that there is a genuine issue for trial ... (see paragraph 25 of MacNeil Estate).
[18]
In view of the case law, the test for summary judgment is
clear: based on the evidence, has the plaintiff shown that the
defendant has no genuine issue for trial?
Analysis
with respect to the issue: Is there a genuine issue for trial?
[19]
I
note at the outset that the only evidence before the court on this motion is
present in the Plaintiff’s moving motion record. The Defendant failed to serve
and file a responding motion record in accordance with Rule 214(2) of the Federal Courts Rules.
[20]
To
succeed on a motion for summary judgment the Plaintiff has to demonstrate that
he will meet every element in his copyright infringement action.
Ownership of Copyright
[21]
The
Plaintiff has not produced a copy of a certificate of registration of copyright
with the Canadian Intellectual Property Office. The absence of a certificate
leads the court to determine that the Plaintiff’s work was not registered in
accordance with s. 53 of the Copyright Act, and the Plaintiff is therefore
not eligible for the s. 53 presumption of subsistence of copyright in his work
and the presumption of his ownership of the impugned works.
[22]
The
Plaintiff is nevertheless entitled to the presumption of copyright ownership in
accordance with s. 34.1(2) of the Copyright Act since his name is
printed across many of the Plaintiff’s comic book works for which he claims
copyright (Plaintiff’s Motion Record, Tab A, page 35).
[23]
The
Defendant has not adduced any evidence to the contrary. I therefore find that
Richard Koslowski is the owner of copyright in “THE3GEEKS” characters.
Infringement of
Copyright
[24]
The
affidavit of Richard Koslowski states that he has personally conducted internet
searches of the Defendant’s business and witnesses the alleged unauthorized reproductions
of “THE3GEEKS” characters.
[25]
The
Plaintiff has produced printouts of the Defendant’s web pages under exhibits B
and C of his affidavit. They show the reproduction of an identical image of “THE3GEEKS”
as depicted in the motion.
[26]
Section
3 of the Copyright Act grants the sole right to the owner of copyright
to “produce or reproduce the work or any substantial part thereof in any
material form whatever”.
[27]
The
evidence under Exhibits B and C to the plaintiff’s affidavit shows printouts of
web pages that are under the control of the Defendant containing “THE3GEEKS” characters’ image
in an identical form as depicted in the motion or in a substantially similar
form.
[28]
The
Defendant has offered no explanation or response to Plaintiff’s allegations
except the outright denials of any wrongdoing in the statement of defence.
[29]
Based on
the evidence, the Court is satisfied that the Defendant has reproduced the
Plaintiff’s copyrighted images, “THE3GEEKS”, and that there is no genuine issue
for trial.
ORDER
THIS COURT DECLARES that:
1.
the
Plaintiff is the author of “THE3GEEKS” characters as depicted in the motion;
2.
the
above-mentioned “THE3GEEKS” characters constitute an original artistic work in
which copyright subsists;
3.
the
Plaintiff is the owner of the copyright in the above-mentioned “THE3GEEKS”
characters; and
4.
from at
least as early as 2006 to date, the Defendant has infringed the Plaintiff’s
copyright, by virtue of having reproduced, or otherwise produced, all or a
substantial part of the Plaintiff’s “THE3GEEKS” characters, or having otherwise
authorized such acts, contrary to Sections 3 and 27 of the Copyright Act
R.S.C. 1985, c. C-42, as amended, including without limitation by displaying
the image as reproduced in the motion on his website (hereinafter the
“Infringing Image”).
THIS COURT ORDERS that:
1.
the
Defendant is hereby restrained, by himself, through agents, or otherwise, from
any further copying the Plaintiff’s works, including without limitation
displaying the above-mentioned Infringing Image, or any other image which is
substantially similar to, or a colourable imitation of any of “THE3GEEKS”
characters;
2.
the
Defendant deliver up to the Plaintiff; or his representatives, or delete or
destroy under oath, as the Plaintiff may elect, all articles and materials
(including without limitation any web pages, brochures, letterhead, business
cards), in the possession, power, custody or control of the Defendant
displaying the Infringing Image, or any
other image which is
substantially similar to, or a colourable imitation of; any of “THE3GEEKS”
characters;
3.
the
Defendant produce to the Plaintiff, within 30 days hereof, a list of all
articles and materials (including without limitation any web pages, brochures,
letterhead, business cards), that have been, and are no more, in the
possession, power, custody or control of the Defendant displaying the
Infringing Image, or any other image which is substantially similar to, or a
colourable imitation of, any of “THE3GEEKS” characters;
4.
the
Defendant pay the Plaintiffs damages for copyright infringement and, in
addition to those damages, the profits that the Defendant has made from the
infringement that are not taken into account in the calculation of the damages;
5.
the
Defendant produce to the Plaintiff, within 30 days hereof, copies of all
invoices, financial statements and any other records evidencing business
revenues from and including 2006 to date;
6.
the
Plaintiff’s claim for damages be referred to a Prothonotary for assessment by a
Prothonotary in accordance with Rule 153 of the Federal Courts Rules;
7.
the
Defendant pay forthwith the Plaintiff’s costs of this motion and of the
Statement of Claim which is $3,642 including counsel fee and disbursements.
“Michael A. Kelen”
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