Federal Court

Industrial and Intellectual Property

Applicant was entitled to statutory damages under Copyright Act (Can.)

Parties had settled prior instances where respondent infringed applicant corporation’s copyright in numerous computer programs, and injunction had been granted. Private investigator retained by corporation attended store where respondent offered to sell refurbished computer that included Windows 7 operating system, and he installed Microsoft Office, but no licence or DVD was provided for operating system or software. Private investigator attended store again and purchased refurbished computer with Windows 7 operating system and Microsoft Office, but he dealt with someone other than respondent. Corporation applied for relief, including damages for selling unlicenced copies of its programs. Application granted in part. Evidence established that respondent sold unlicenced copies of corporation’s programs on one occasion and infringed corporation’s copyright. Corporation was entitled to statutory damages under Copyright Act (Can.). Corporation was not awarded statutory maximum because conduct of respondent was not egregious, copyrights were only infringed on one occasion and awarding statutory maximum would amount to damages of $100,000, which was out of proportion to any profit made. Respondent failed to abide by terms of prior settlement agreements and with terms of prior injunction, and there is clear and compelling need to deter respondent from future infringing activities. Respondent was ordered to pay statutory damages of $10,000 for each infringement of corporation’s computer programs that were unlawfully copied and distributed, for total of $50,000. Punitive and exemplary damages were warranted based on respondent’s misconduct, need for denunciation and to deter him from any future infringement of corporation’s copyright in its computer programs. In circumstances, respondent was ordered to pay punitive and exemplary damages of $50,000.

Microsoft Corp. v. Liu (Aug. 19, 2016, F.C., Keith M. Boswell J., T-797-15) 270 A.C.W.S. (3d) 179.

Trade marks

There was no cause to reduce compensatory and punitive awards

Court accepted plaintiffs’ uncontradicted evidence with respect to four instances where counterfeit Chanel merchandise was offered for sale or sold in conventional retail store. Plaintiffs obtained judgment against LCK and 694. Plaintiffs’ action against SL was dismissed. Court granted declaratory relief confirming validity and ownership of Chanel trademarks; injunctive relief precluding defendants from continuing their infringing activities, and injunctive relief requiring delivery up and destruction of remaining infringing goods. SL’s appeal was allowed on limited grounds that there was ambiguity concerning SL’s involvement in one of instances. Summary trial motion was directed to be remitted to trial judge for redetermination in accordance with reasons. Court was to resolve ambiguity with respect to SL’s involvement in one of instances of infringement and re-determine quantum of damages. Findings, declarations, orders and condemnations made against corporate defendants and SL including compensatory damages award, punitive damages award and costs award were confirmed and remained unchanged. SL was jointly and severally liable with corporate defendants for infringement. In all respects and at all relevant times SL was personally liable of infringing activities that took place in business or at premises on all four instances. At all relevant times SL was controlling mind of corporate defendants. Corporate changes did not affect SL’s personal liability. SL continued to use property as her own and continued to control business. Motivation behind corporate changes and transfer of ownership alleged by SL was highly questionable and they were fraudulent. There were ample evidentiary base and compelling legal reasons to find SL personally liable of all four instances of infringement. There was no cause to reduce compensatory and punitive awards.

Chanel S. de R.L. v. Lam Chan Kee Co. (Aug. 30, 2016, F.C., Luc Martineau J., T-653-13) 270 A.C.W.S. (3d) 181.

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