Copyright and trade-mark owners whose IP is infringed may seek a variety of remedies against the perpetrators, including damages, injunctive relief and legal costs. Psychologically though, destruction and delivery up may provide the most satisfaction. Specifically provided for in the respective statutes, these remedies allow the successful plaintiff to either compel the infringer to destroy the counterfeit items under oath or actually take possession of them. In this post, we survey destruction and delivery up orders granted and denied in 2019. Overall, the year’s rulings are mixed, demonstrating that even as the victim of infringement, “you can’t always get what you want.”
Luxury goods are common targets for counterfeiters, as this year’s crop of destruction and delivery up orders illustrates. Appearing four times before the Federal Court was Nathalie Marie Tobey, aka Nathalie Henrie. Operating out of a clandestine retail establishment on Old Yonge Street, Ms. Tobey was accused of selling counterfeit Givenchy, Louis Vuitton, Dior and Celine merchandise. Her defence was essentially that a well-informed member of the public would not confuse the goods she was selling with the plaintiffs’. Justice Norris dismissed this defence as having “no hope of success whatsoever,” before ordering the delivery up of all goods bearing the plaintiff’s subject trademarks, at least, those not already seized by the Toronto Police Service.
Alliance Laundry Systems LLC v. Whirlpool Canada LP
The dispute in Alliance Laundry Systems LLC v. Whirlpool Canada LP relates to the mark “SPEED QUEEN”. It traces its roots to a series of 1979 transactions, with Whirlpool retaining the rights to the mark in Canada and Alliance retaining them elsewhere. After extensive litigation, however, Alliance successfully had the mark expunged in 2016; this year’s case involved ownership of the unregistered mark.
Overall, the case was a win for Whirlpool, with Justice Gagné ruling that it had retained the common-law mark by using it, and that Alliance had indeed passed off its wares. The order for delivery up or destruction, however, relates not to the appliances themselves, but to signage, advertising, and other material in any form that would infringe on Whirlpool’s rights.
Ranchman’s Holding Inc v Bull Bustin’ Inc.
In this dispute involving a bull riding event, it was the plaintiff, Ranchman’s Holding, who ended up having a rough ride. Ranchman’s, a Calgary cookhouse and dance hall, holds a rodeo as a kick-off to each year’s Stampede. This year, however, they were unable to reach an agreement with the rodeo’s long-time producers. Unwilling to accept their move to the Grey Eagle Event Centre, Ranchman’s sought a pre-trial injunction compelling the defendants to destroy all Ranchman’s intellectual property in their possession, custody or control.
In addition to misrepresentation, breach of confidence and breach of fiduciary duty, the plaintiffs claimed passing off, trademark infringement, and copyright infringement. To Justice Eamon, however, it was clear that the Grey Eagle event was distinct from the Ranchman’s event; there would be no destruction or delivery up in this case.
3469051 Canada Inc. v. Axis Heating and Air Conditioning Inc.
In a case of sensational spelling, the plaintiff in this case argued that the word “Axis” infringed on its registered trademark “AXXYS”. The plaintiff is a Quebec-based construction company; the defendant, is a smaller Ontario-based company that installs heating and air conditioning systems. Justice Roy ruled that there was indeed a likelihood of confusion and that Axis had engaged in passing off, awarding the plaintiff injunctive relief. However, he stopped short of ordering destruction and delivery up as the plaintiff had alluded to these remedies in its submission, without specifying its intentions precisely. The parties were given 10 days to state their intentions.
Young v. Thakur
Melodie Young is a singer songwriter; she composed the song “Secrets”. Rohit Thakur is a videographer, film maker and owner of the Badmash Factory in Toronto. Responding to an ad on an online marketplace, a friend of Ms. Young’s requested Mr. Thakur’s service for the production of a music video for Secrets. In the absence of a written contract or other permission, the defendants posted the music video featuring the song on a video sharing platform and on Badmash’s website. Justice Kane ruled that doing so indeed infringed on the plaintiffs’ copyright, and that they entitled to injunctive relief and statutory damages. However, the requested order for destruction and delivery up related to footage filmed by the defendant, and as such, the plaintiffs had no right to such an order.
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David McLauchlan is an associate within the Intellectual Property Practice Group. He works chiefly in the areas of health and life sciences. He advises clients on drafting and negotiating research agreements, as well as on issues related to regulatory responsibility, ethics and compliance.