October 25, 2012
Previously published on October 24, 2012
In Adobe Systems Incorporated, Microsoft Corporation and Rosetta Stone Ltd. v. Dale Thompson, the Federal Court recently took another significant step in addressing the problem of sale of pirated software in Canada. Pursuant to the summary judgment rules of the Court, Justice Campbell granted summary judgment, including broad injunctive relief, maximum statutory damages, punitive damages and costs. In two precedent setting findings, maximum statutory damages were awarded despite the fact that there was no showing of recidivism and the Court awarded damages in respect of unauthorized reproduction and display of cover art on the Defendant’s websites. The Plaintiffs were successfully represented by Brian P. Isaac and Vik G. Tenekjian of our Toronto office. The case is significant since it is another case where the Federal Court has shown that they are willing to address the need for cost-effective litigation and significant penalties in order to deter intellectual property crime in Canada. In the case at hand, Justice Campbell stated that he found “that the Defendant’s infringing conduct, and his response to being held accountable for this conduct, is particularly egregious and requires a clear deterrent message to the Defendant, and anyone else of like mind.” The Plaintiffs had commenced an action against the Defendant for sale of pirated copies of their well-known and successful software programs. The Defendant filed a Statement of Defence making it clear that he was not acknowledging any wrongdoing through the sale of pirated software. The evidence established that the Defendant had clearly sold pirated copies of software of each of the Plaintiffs and that he was displaying cover art from the Plaintiffs’ products on his websites. The Plaintiffs brought a motion for summary judgment. The Defendant did not respond and did not attend at the hearing. Following on recent cases where significant remedies including significant damage awards have been granted against recidivist IP criminals, this most recent case has recognized the ability to utilize maximum statutory damages, punitive damages and solicitor and client costs awards in order to deter IP crime even in cases where no recidivism has been shown. Further, the finding of infringement of copyright in cover art used on the software products in issue, and an award of maximum statutory damages in respect of the reproduction and display on websites of that art, provides precedent for a straightforward cause of action against any pirate reproducing and using product packaging artwork in trying to sell counterfeit and pirated products online. Brian P. Isaac, Toronto The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
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