Federal Court of Canada Awards Over $29M in Statutory Damages for Copyright Infringement and Finds Defendants Induced Infringement Federal Court of Canada Awards Over $29M in Statutory Damages for Copyright Infringement and Finds Defend...

Trademark and Copyright Litigation
September 1, 2021September 1, 20212021-09-01
On August 10, 2021, the Federal Court of Canada (the Court) issued its decision in Bell Canada v L3D Distributing Inc., 2021 FC 832, in which it granted the plaintiffs’ motion for default judgement, awarding over $29 million in statutory damages for copyright infringement relating to pre-loaded set-top boxes and internet protocol television (IPTV) services, and finding the defendants knowingly induced infringement. This decision appears to be the first time the Court has applied the common law inducement test in the context of copyright infringement.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-canada-awards-over-29m-statutory-damages-for-copyright-infringement-and

OSFI Updates Technology and Cyber Security Incident Reporting Advisory OSFI Updates Technology and Cyber Security Incident Reporting Advisory

Cybersecurity
September 1, 2021September 1, 20212021-09-01
On August 13, 2021, the Office of the Superintendent of Financial Institutions (OSFI) issued an updated Technology and Cyber Security Incident Reporting Advisory (Advisory) governing the requirements for federally regulated financial institutions (FRFIs) in Canada to report technology and cyber security incidents to OFSI. OSFI is an independent federal government agency that regulates and supervises FRFIs, including all banks, insurance companies and federally incorporated or registered trust and loan companies.
Deeth Williams Wall https://www.dww.com/articles/osfi-updates-technology-and-cyber-security-incident-reporting-advisory

Overbreadth Confirmed as a Valid Ground of Patent Invalidity Overbreadth Confirmed as a Valid Ground of Patent Invalidity

Patent Litigation
September 1, 2021September 1, 20212021-09-01
On July 28, 2021, the Federal Court of Appeal of Canada (the Court) issued a decision in the case of Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2021 FCA 154. In this appeal, Seedlings Life Science Ventures, LLC (Seedlings) challenged the Federal Court’s finding that the claims at issue of Seedling’s patent were invalid for overbreadth.
Deeth Williams Wall https://www.dww.com/articles/overbreadth-confirmed-as-a-valid-ground-of-patent-invalidity

Federal Court of Appeal Dismisses Bauer’s Appeal in Patent Infringement Case, Clarifies Scope of Section 53.1 Federal Court of Appeal Dismisses Bauer’s Appeal in Patent Infringement Case, Clarifies Scope of Section ...

Patent Litigation
September 1, 2021September 1, 20212021-09-01
On August 12, 2021, Canada’s Federal Court of Appeal (FCA) in Bauer Hockey Ltd. v Sport Maska Inc. (CCM Hockey), 2021 FCA 166, upheld the Federal Court’s (FC) finding that the claims in issue regarding Bauer Hockey Ltd.’s (Bauer) patent were invalid for obviousness, as previously reported by the E-TIPS® Newsletter here.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-appeal-dismisses-bauer%E2%80%99s-appeal-patent-infringement-case-clarifies-scope

Examination Delays in Canadian Trademark Applications: The Snail Pauses Examination Delays in Canadian Trademark Applications: The Snail Pauses

Trademarks
August 17, 2021August 17, 20212021-08-17
Significant delays in examination of Canadian trademark applications continue, both for reasons related and unrelated to the pandemic. Backlogs in first examination of most applications are getting worse, with first examination ranging from 16-32 months from filing or more. It is like watching a snail pause to catch its breath.
Deeth Williams Wall https://www.dww.com/articles/examination-delays-canadian-trademark-applications-snail-pauses

Supreme Court of Canada Addresses Limitation Periods and Discoverability in Unanimous Decision Supreme Court of Canada Addresses Limitation Periods and Discoverability in Unanimous Decision

Litigation
August 17, 2021August 17, 20212021-08-17
On July 29, 2021, the Supreme Court of Canada (SCC) in Grant Thornton LLP v New Brunswick, 2021 SCC 31, clarified that a claim is discovered, and the limitation period begins to run, when the plaintiff has actual or constructive knowledge “of the material facts upon which a plausible inference of liability on the defendant’s part can be drawn”.
Deeth Williams Wall https://www.dww.com/articles/supreme-court-of-canada-addresses-limitation-periods-and-discoverability-unanimous

Supreme Court of Canada Upholds No Mandatory Tariff for York University Supreme Court of Canada Upholds No Mandatory Tariff for York University

Trademark and Copyright Litigation
August 17, 2021August 17, 20212021-08-17
On July 30, 2021, in York University v Canadian Copyright Licensing Agency (Access Copyright), 2021 SCC 32, the Supreme Court of Canada (SCC) unanimously dismissed an appeal of the decision of the Federal Court of Appeal (as previously reported by the E-TIPS® Newsletter here), upholding the finding that the tariff in question was not mandatory, nor enforceable, against York University (York) since York chose not to be bound by the license.
Deeth Williams Wall https://www.dww.com/articles/supreme-court-of-canada-upholds-no-mandatory-tariff-for-york-university

Ontario Superior Court of Justice Strikes Claim in Class Action Alleging Misappropriation and Misuse of Personal Information Stemming from Capital One’s Data Breach Ontario Superior Court of Justice Strikes Claim in Class Action Alleging Misappropriation and Misuse of P...

Privacy
August 17, 2021August 17, 20212021-08-17
On August 4, 2021, the Ontario Superior Court of Justice (the Court) issued its decision in Del Giudice v Thompson, 2021 ONSC 5379, striking the plaintiffs’ Fresh as Amended Statement of Claim (the Claim) and dismissing its motion to certify a class action claim for data misappropriation and misuse stemming from the 2019 data breach of personal information from Capital One.
Deeth Williams Wall https://www.dww.com/articles/ontario-superior-court-of-justice-strikes-claim-class-action-alleging-misappropriation-and

Trademarks Opposition Board of Canada Considers Estoppel by Convention in Confusion Analysis Trademarks Opposition Board of Canada Considers Estoppel by Convention in Confusion Analysis

Trademark and Copyright Litigation
August 17, 2021August 17, 20212021-08-17
On July 15, 2021, in Symantec and Veritas Technologies v Det Norske Veritas, 2021 TMOB 143, the Trademarks Opposition Board (TMOB) of Canada rejected an opposition to the trademark application for DET NORSKE VERITAS for software based on confusion with the opponent’s VERITAS trademark for software.
Deeth Williams Wall https://www.dww.com/articles/trademarks-opposition-board-of-canada-considers-estoppel-by-convention-confusion-analysis

In A Historic Move, South Africa and Australia Recognize that Artificial Intelligence can be Recognized as an Inventor In A Historic Move, South Africa and Australia Recognize that Artificial Intelligence can be Recognized a...

Patents
August 4, 2021August 4, 20212021-08-04
On July 30 2021, the Federal Court of Australia released a landmark decision in Thaler v Commissioner of Patents [2021] FCA 879, finding that artificial intelligence can be an inventor for the purposes of the Australian Patents Act 1990 (Cth). The historic decision came just days after South Africa became the first country to defy the status quo and award a patent recognising an AI as an inventor (ZA2021/03242).
Deeth Williams Wall https://www.dww.com/articles/a-historic-move-south-africa-and-australia-recognize-artificial-intelligence-can-be

Federal Court of Canada Rejects Survey Evidence in Trademark Appeal Federal Court of Canada Rejects Survey Evidence in Trademark Appeal

Trademark and Copyright Litigation
August 4, 2021August 4, 20212021-08-04
In a recent decision in Tokai of Canada Ltd v Kingsford Products Company, LLC, 2021 FC 782, involving the issue of whether two trademarks were confusing, the Federal Court of Canada (the Court) rejected the appellant’s survey evidence consisting of an online survey, finding it deficient, in that it failed to simulate a consumer’s imperfect recollection at the time when they encounter the products and the appellant’s trademark in the marketplace.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-canada-rejects-survey-evidence-trademark-appeal

Ontario Court Partially Allows Appeal on Jurisdiction Issue for “Inside Out” Copyright Infringement Claim Ontario Court Partially Allows Appeal on Jurisdiction Issue for “Inside Out” Copyright Infringement Claim...

Trademark and Copyright Litigation
August 4, 2021August 4, 20212021-08-04
On July 12, 2021, in Pourshian v Walt Disney Company, 2021 ONSC 4840, the Ontario Superior Court of Justice (the Court) partially allowed an appeal by Mr. Damon Pourshian (Pourshian) of a decision that stayed his claim for copyright infringement against multiple Walt Disney and Pixar companies (the defendants) due to lack of court jurisdiction.
Deeth Williams Wall https://www.dww.com/articles/ontario-court-partially-allows-appeal-on-jurisdiction-issue-for-%E2%80%9Cinside-out%E2%80%9D-copyright

Government of Canada Launches Consultation on a Modern Copyright Framework for Artificial Intelligence and the Internet of Things Government of Canada Launches Consultation on a Modern Copyright Framework for Artificial Intelligence an...

Copyright
August 4, 2021August 4, 20212021-08-04
On July 16, 2021, the Government of Canada (the Government) launched a public consultation on a modern copyright framework for artificial intelligence (AI) and the Internet of Things (IoT) with a view to informing policy development and ensuring that Canada’s copyright framework reflects the evolving digital world. Along with the consultation, the Government published a consultation paper that (i) raises the challenges to the copyright framework around AI and IoT; (ii) presents possible approaches to address them; and (iii) outlines questions to help guide the development of policy measures.
Deeth Williams Wall https://www.dww.com/articles/government-of-canada-launches-consultation-on-a-modern-copyright-framework-for-artificial

Federal Court of Canada Finds Knight Parties in Contempt of Court Federal Court of Canada Finds Knight Parties in Contempt of Court

Trademark and Copyright Litigation
August 4, 2021August 4, 20212021-08-04
On July 20, 2021, the Federal Court of Canada (the Court), in Canadian Standards Association v PS Knight Co Ltd and Gordon Knight, 2021 FC 770, found P.S. Knight Co. Ltd., Mr. Gordon Knight and Knight Americas (collectively, the Knight Parties) in contempt of court for failing to abide by, or aiding and abetting another Knight Party to contravene, an amended judgement and a supplemental judgement in 2016 FC 294 (previously reported by E-TIPS® Newsletter here) and 2016 FC 387 (collectively, the Judgement).
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-canada-finds-knight-parties-contempt-of-court

Federal Court of Canada Finds the Operation of Google’s Search Engine a Commercial Activity Under PIPEDA Federal Court of Canada Finds the Operation of Google’s Search Engine a Commercial Activity Under PIPEDA

Privacy
July 21, 2021July 21, 20212021-07-21
On July 8, 2021, the Federal Court of Canada (the Court) in Reference re Subsection 18.3(1) of the Federal Courts Act, 2021 FC 723, found that Google’s search engine service operates in the course of commercial activities within the meaning of the Personal Information Protection and Electronic Documents Act (PIPEDA), and that such service does not fall under PIPEDA’s journalistic exemption.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-canada-finds-operation-of-google%E2%80%99s-search-engine-a-commercial-activity

CJEU Issues First Ruling on the Registration of a Sound Mark CJEU Issues First Ruling on the Registration of a Sound Mark

Trademark and Copyright Litigation
July 21, 2021July 21, 20212021-07-21
On July 7, 2021, the Court of Justice for the European Union (the CJEU), in Ardagh Metal Beverage Holdings GmbH & Co. KG v European Union Intellectual Property Office (T 668/19), dismissed a trademark application for the registration of a sound mark because it is not distinctive. This case is the court’s first ruling on an application for registration of a sound mark submitted in audio format.
Deeth Williams Wall https://www.dww.com/articles/cjeu-issues-first-ruling-on-registration-of-a-sound-mark

Government of Canada Publishes Proposed Amendments to the Patent Rules for Consultation Government of Canada Publishes Proposed Amendments to the Patent Rules for Consultation

Patents
July 21, 2021July 21, 20212021-07-21
On July 3, 2021, the Government of Canada (the Government) published proposed amendments to the Patent Rules for public consultation. According to the regulatory impact analysis statement, the proposed amendments are part of the implementation of Canada’s patent term adjustment (PTA) obligation under the Canada-United States-Mexico Agreement (CUSMA).
Deeth Williams Wall https://www.dww.com/articles/government-of-canada-publishes-proposed-amendments-to-patent-rules-for-consultation

Federal Court of Canada Grants Motion for Default Judgement for Infringement of AMUL Trademark Federal Court of Canada Grants Motion for Default Judgement for Infringement of AMUL Trademark

Trademark and Copyright Litigation
July 21, 2021July 21, 20212021-07-21
On June 22, 2021, the Federal Court (the Court) in Kaira District Co-operative Milk Producers’ Union Limited v AMUL Canada, 2021 FC 636, granted Kaira District Co-operative Milk Producers’ Union Limited (Kaira) and Gujarat Cooperative Milk Marketing Federation Ltd. (Gujarat) (collectively, the Plaintiffs) ex parte motion for default judgement for trademark and copyright infringement.
Deeth Williams Wall https://www.dww.com/articles/federal-court-of-canada-grants-motion-for-default-judgement-for-infringement-of-amul

Ontario Ministry of Government and Consumer Services Launches Consultation on Modernizing Ontario’s Privacy Protection Framework Ontario Ministry of Government and Consumer Services Launches Consultation on Modernizing Ontario’s Priva...

Privacy
July 6, 2021July 6, 20212021-07-06
On June 17, 2021, the Ontario Ministry of Government and Consumer Services (MGCS) announced the launch of public consultation on the MGCS’ white paper, which outlines proposals for reforming Ontario’s privacy protection framework.
Deeth Williams Wall https://www.dww.com/articles/ontario-ministry-of-government-and-consumer-services-launches-consultation-on-modernizing

Canada’s Federal Court of Appeal Upholds Summary Judgment in Patent Infringement Action Canada’s Federal Court of Appeal Upholds Summary Judgment in Patent Infringement Action

Patent Litigation
July 6, 2021July 6, 20212021-07-06
On June 16, 2021, Canada’s Federal Court of Appeal (FCA) in ViiV Healthcare Company v Gilead Sciences Canada, Inc., 2021 FCA 122, upheld the Federal Court’s (FC) summary judgment dismissing patent infringement action brought by ViiV Healthcare Company (ViiV) against Gilead Sciences Canada, Inc. (Gilead), as previously reported by the E-TIPS® Newsletter here. The FCA also dismissed ViiV’s appeal from three interlocutory orders, including ViiV’s motion to adjourn or quash Gilead’s motion for summary trial.
Deeth Williams Wall https://www.dww.com/articles/canada%E2%80%99s-federal-court-of-appeal-upholds-summary-judgment-patent-infringement-action

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

E-TIPS is a registered trade-mark of Deeth Williams Wall LLP.