Supreme Court of Canada: Intellectual Property Appeals

The following intellectual property cases are active before the Supreme Court of Canada. This list is automatically generated daily. Please contact me if you notice any errors or inconsistencies.

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[Listing generated on April 20, 2021]

Proceedings waiting for rulings

The following intellectual property appeals are awaiting judgment from the Supreme Court of Canada.

SCC File No. Status Style of Cause Appeal File No. Excerpt from Appeal Decision
39222 Hearing scheduled for 0000-00-00 York University, et al. v. The Canadian Copyright Licensing Agency (“Access Copyright”), et al. A-259-17 2020 FCA 77: Access Copyright sued York to enforce the interim tariff, seeking various remedies including royalties as provided in the tariff. York counterclaimed, seeking a declaration that all copying which fell within the terms of the Guidelines constituted fair dealing … As a result, I conclude that a final tariff would not be enforceable against York because tariffs do not bind non-licensees. If a final tariff would not be binding, the conclusion can hardly be different for an interim tariff. … As a result, the validity of York’s Guidelines as a defence to Access Copyright’s action does not arise because the tariff is not mandatory and Access Copyright cannot maintain a copyright infringement action. Therefore, I would allow York’s appeal from the judgment of the Federal Court [see 2017 FC 669] with costs, set aside the Federal Court’s judgment, and dismiss Access Copyright’s action with costs. … The prayer for relief of York’s counterclaim seeks a declaration that “any reproductions made that fall within the guidelines set out in York’s “Fair Dealing Guidelines for York Faculty and Staff (11/13/12)” … constitute fair dealing pursuant to sections 29, 29.1, or 29.2 of the Copyright Act”. It is apparent from this that the Guidelines are the heart of York’s position in this litigation. Given the relief which York sought, it was incumbent on it to justify the Guidelines themselves so as allow the Court to declare that reproductions that fall within the Guidelines are fair dealing. It has not done so.

Application for leave

Applications for leave to appeal have been filed on the following intellectual property related proceedings.

SCC File No. Status Style of Cause Appeal File No. Excerpt from Appeal Decision
39418 Application for leave filed 2020-11-10 Society of Composers, Authors and Music Publishers of Canada, et al. v. Entertainment Software Association, et al. A-267-17 2020 FCA 100: [SOCAN] filed with the Copyright Board proposed tariffs for certain years for the communication to the public by telecommunication of works in its repertoire through an online music service. … After SOCAN had filed its proposed tariffs, the Copyright Act was amended. A new subsection, subsection 2.4(1.1), sometimes called the “making available provision”, was added to the Copyright Act. … In short, in the Board’s view, subsection 2.4(1.1) of the Copyright Act deems the act of making a work available to the public a “communication to the public” within paragraph 3(1)(f) of that Act and, thus, an act that triggers a tariff entitlement. … Nowhere did the Board explicitly say that it had a desired result in mind and that it was going to interpret subsection 2.4(1.1) in a manner to get that result. But looking at the reasons as a whole, whether it intended to do so or not, that is exactly what the Board did: it skewed its analysis in favour of one particular result. … The Board’s decision and many of the submissions supporting it suffer from a misunderstanding of the relationship between Canadian domestic law and international law. … On the submissions made, this much can be said. Subsection 2.4(1.1) does not create a new exclusive right. The Board used a “deeming provision” to create a right which, simultaneously, was and was not part of the communication right. When the deeming provision is set aside, all that is left is what the Board itself described (at para. 117) as a “preparatory act”. This is consistent with Parliament’s use of the word “includes” in subsection 2.4(1.1). It would be contrary to the policy of the Act to establish a tariff on a preparatory step as this would constitute disaggregating rights for the purpose of adding an additional layer of royalties.
39439 Application for leave filed 2020-12-10 Nova Chemicals Corporation v. The Dow Chemical Company, et al. A-150-17 2020 FCA 141: Before the Court is an appeal and a cross-appeal from the judgment of the Federal Court in file T-2051-10 (per Fothergill J.): 2017 FC 350, supplementary reasons 2017 FC 637, reasons on costs 2017 FC 759. … Broadly speaking, the appeal and the cross-appeal in this Court concern the principles that should govern the calculation of a plaintiff’s recovery under an accounting of profits. This issue arises from an earlier judgment of the Federal Court, later affirmed on appeal: 2014 FC 844, aff’d 2016 FCA 216. … The jurisprudence has developed two rules for courts to help them implement these principles: (1) only actual profits, meaning actual revenues minus actual costs, are disgorged; (2) only profits that have resulted from the patent infringement are disgorged. … Thus, for the foregoing reasons, in the accounting of profits context, the use of the term “non-infringing baseline” is preferable to “non-infringing alternative”. Using the term “non-infringing baseline” steers courts and litigants away from impermissible “but for” reasoning. … In my view, absent some exceptional or compelling circumstance or persuasive expert evidence to the contrary in a particular case, the full cost method is the appropriate approach to deducting costs in an accounting of profits. … Dissent: For the reasons below, I have concluded that an apportionment of profits is appropriate in this case. I also conclude that the Federal Court made a reviewable error by not considering the issue of “causation”, which is at the heart of the legal test of apportionment.
39530 Application for leave filed 2021-01-22 Amgen Inc., et al. v. Pfizer Canada ULC A-122-20 2020 FCA 188: Before this Court is an appeal from a judgment dated April 16, 2020 of the Federal Court (per Southcott J.): 2020 FC 522. The Federal Court found claims 43-47 of the appellants’ Canadian Patent No. 1,341,537 to be obvious and, thus, invalid. The appellants submit that the Federal Court committed reviewable error in applying the test for obviousness. … In drafting its reasons, the Federal Court adopted what might be considered a “segmented approach” in its analysis of the obviousness factors. We consider this to be merely an artefact of the manner in which the case was argued. On occasion, however, an overly segmented approach can lead to error. The proper approach is to identify the genuine concept of obviousness as exemplified by the factors identified in the jurisprudence and then apply that concept with due attention to the factors. This, the Federal Court did, as is seen by its overall conclusion in paragraph 366 of its reasons.
39550 Application for leave filed 2021-02-11 Vinh Phat Steven Dong (a.k.a Steven Dong), et al. v. Royal Pacific Real Estate Group Ltd., et al. 2020 BCCA 323: Mr. Dong appeals from the decision (see 2018 BCSC 127) that found that he (and his companies) infringed the trade-mark of Royal Pacific Real Estate Group Ltd., and committed the tort of passing off. Royal Pacific Realty (Kingsway) Ltd. unsuccessfully sued for breach of contract. … The trial judge concluded that there was overwhelming evidence of goodwill associated with the name and the Registered Trade-mark, and no issue is taken with this finding. The issue of whether Mr. Dong had permission to use the Registered Trade-mark was resolved against him, as noted above. The trial judge concluded that Mr. Dong promoted his products, including Bliip Box, in such a way to create the impression that its product or services are in some way approved or endorsed by the plaintiff … In my view, Mr. Dong has not identified an overriding or palpable error with respect to the findings of the trial judge.
39576 Application for leave filed 2021-03-25 Travelway Group International Inc. v. Group III International Ltd., et al. A-356-19 2020 FCA 210: The appellants appeal the judgment of the Federal Court (per St. Louis, J.) rendered on August 29, 2019 (2019 FC 1104) ordering the expungement of the respondent’s registered trademarks and dismissing the appellant’s claim for damages. … In this appeal, the appellants submit that the Federal Court erred and should have found that the infringing marks have always been invalid and never registrable, therefore disentitling the respondent from relying on section 19 and entitling the appellants to financial compensation from the moment the respondent started using the infringing trademarks. … For these reasons, I would allow the appeal with costs and award the appellants an accounting of profits to be quantified by way of reference under Rule 153 of the Rules.

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Canadian Intellectual Property