Case law update Part 3: IP motions decided in 2023

In 2023, there were 43 reported Federal Court IP motions. The pie chart below displays the breakdown of the underlying IP rights at issue in the proceedings:

Given the number of reported motion decisions and their breadth of scope, in this post, we provide an overview of the motions in non-patent proceedings. Our next post will address the motions in patent proceedings.

Interim injunctions

Two actions sought an interim injunction in respect of copyright and/or trademark infringement. Both motions were dismissed because, among other reasons, the moving party failed to prove it would suffer irreparable harm if the order was not granted. One decision was released 2 days after the hearing. The other was released 670 days after the hearing. We assume the latter is an anomaly because courts often prefer to release interim injunction decisions promptly.

Trademarks

All the trademark motions were decided by judges of the Federal Court except for one decided by an Associate Judge.

Three motions dealt with default judgment. These primarily related to actions against importers and sellers of counterfeit goods. Two motions for default judgment were granted. The average time between hearing and release of decision was 49 days. The third motion was to set aside a default judgment order. The motion was dismissed within 8 days of the hearing.  

There were two summary trial or summary judgment motions. The motion for a summary trial was successful and was released 235 days after the hearing. The motion for summary judgment was partly successful and was also released 235 days after the hearing. The exact matching time frames can only be a coincidence as the proceedings were different and involved different judges (Crampton CJ and Fuhrer J).

One motion was to adjourn a trial a few weeks before it started, which was unsuccessful. The decision was released 7 days after the hearing; no doubt because of the impending trial.

There were two applications decided. One alleged trademark infringement and was unsuccessful with costs being awarded to the respondent at the high rate of 50% (due to some aggravating factors). This was decided within 36 days of the hearing. The other sought expungement of two trademarks and was successful, including for bad faith, with the applicant receiving lump sum costs and disbursements in the amount of $15,000. This one took longer – it was decided within 184 days of the hearing – likely because it involved more substantive issues.

The last reported decision concerned two motions on the right to cross-examine on an affidavit filed and a request to withdraw a previously filed affidavit in an appeal of a decision by the Registrar of Trademarks. The Court confirmed the inherent right to cross-examine on affidavits filed in the Federal Court and declined the request to withdraw an earlier filed affidavit as it was an “ill-disguised attempt to shield [the affiant] from cross-examination.” These motions were decided in writing without an oral hearing. 

Copyright

All the copyright motions were decided by judges of the Federal Court.

Three motions were brought for contempt. In each case, the moving party alleged the defendant failed to comply with a court order. Each motion was successful. As set out below, the average time a decision was 219 days. In the first, the defendant was found guilty of contempt for disobeying paragraphs of an order and a hearing was set down to determine the appropriate penalty. The decision was released 287 days after the hearing. The second was a costs hearing from the motion previously mentioned where the Court ordered the defendant to pay $94,906 to the plaintiff for its fees and expenses. The decision was released 175 days after the hearing. The third was a sentencing phase of a different contempt proceeding where the defendant had been previously found guilty of disobeying a court order. The Court ordered the defendant be incarcerated for a period of 60 days, to be served intermittently from Friday evenings at 6 p.m. until Monday mornings at 6 a.m.” The decision was released 197 days after the hearing.

Three procedural motions were reported. In the first, the defendant sought to strike a statement of claim or stay the action in favour of a Quebec legal proceeding. The Court dismissed the motion within 63 days and awarded costs to the plaintiff.

The second and third motions related to different class proceedings. One was a motion to certify a class proceeding against unknown defendants whose Internet Protocol addresses were allegedly used to upload and download films produced by Voltage without authorization. The motion was dismissed within 66 days, with leave to amend. The other was to certify a class proceeding against a corporation that provides facial recognition and identification services using a facial recognition technology data. In refusing to grant the certification, the Court held the plaintiff failed to establish a basis in fact that there is an identifiable class of two or more persons. This decision took longer and was released 351 days after the hearing.

Design rights

There was one motion involving design rights. The underlying action alleged infringement of patents and industrial designs. The defendant moved to amend its defence and counterclaim after completing examinations for discovery. 83 days after the hearing, most of the proposed amendments were allowed. However, allegations of insufficiency and inventorship were refused.