Federal Appeal

Industrial and Intellectual Property


Federal Court erred in relying on lack of evidence about American law as basis for dismissal of copyright claim

Plaintiff owned and published Indian Punjabi-language daily newspaper called “Ajit Daily.” Bains defendants owned and published Canadian Pubjabi-language newspaper called “Ajit Weekly.” There was litigation between parties over use of Ajit name and partial settlement agreement was reached (PSA). PSA provided for limited license to Bains defendants to use Ajit Daily logo from specified date and for further license to use approved variation of logo under conditions. New York law was to govern PSA. Plaintiff claimed Bains defendants infringed its copyright in Ajit Daily logo. Plaintiff’s claims of copyright infringement were dismissed because of lack of evidence about American law. Plaintiff appealed and sought to set aside part of judgment dismissing claims against Bains defendants. Appeal allowed. Federal Court made legal and reviewable factual errors that were central to its decision to dismiss claims against Bains defendants. Claims against Bains defendants were remitted back to Federal Court for re-determination. Federal Court erred in law in relying on lack of evidence about American law as providing basis for dismissal of copyright claim. Lack of evidence about American law was not impediment to Federal Court interpreting PSA to adjudicate copyright claim. Canadian conflict law principles provide that court faced with interpreting contract that contained choice of foreign law clause should apply domestic law if it had no evidence as to content of foreign law. Fact Bains Defendants’ masthead complied with PSA at time of summary trial did not provide basis for dismissal of copyright claim in its entirety. PSA provided only for license to Bains Defendants to use Ajit Daily logo, or variation of it from specified date onwards and contained no release for acts of infringement that pre-dated that specified date. Choice of forum provision contained in PSA did not provide basis for dismissal of copyright claim because parties attorned to jurisdiction of Federal Court for adjudication of copyright claim through their pleadings and no party objected to Federal Court’s jurisdiction by reason of choice of forum clause in PSA. Federal Court erred in deferring dispute to New York courts on its own motion because court could not of its own motion decline to hear dispute that fell within its jurisdiction based on its belief that another forum was more appropriate.

Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd. (March 2, 2016, F.C.A., J.D. Denis Pelletier J.A., David Stratas J.A., and Mary J.L. Gleason J.A., A-570-14) Decision at 248 A.C.W.S. (3d) 179 was varied. 264 A.C.W.S. (3d) 478.

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