Federal Court Decisions

 

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.

 

 

[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.

 

[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.

 

[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:

[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”

FEDERAL COURT

 

SOLICITORS OF RECORD

 

 

 

DOCKET:                                          T-1378-08

 

STYLE OF CAUSE:                          RICHARD KOSLOWSKI v. HOGAN SCOTT COURRIER carrying on business as GEEKS GALORE COMPUTER CENTER

 

 

 

 

PLACE OF HEARING:                    Toronto, Ontario

 

DATE OF HEARING:                      August 31, 2009

 

REASONS FOR ORDER

AND ORDER:                                   KELEN J.

 

DATED:                                             September 9, 2009

 

 

 

APPEARANCES:

 

Mr. Tony Bortolin	FOR THE PLAINTIFF
N/A	FOR THE DEFENDANT

 

SOLICITORS OF RECORD:

 

Mr. Tony Bortolin	FOR THE PLAINTIFF
N/A	FOR THE DEFENDANT