[2016] 3 F.C.R. D-15
Copyright
Appeal from Federal Court (F.C.) decision (2014 FC 1139) wherein F.C. dismissed appellant’s claims of copyright infringement, passing off against respondents — Appellant owner, publisher of Indian Punjabi-language daily newspaper Ajit Daily — Respondents owners, publishers of Canadian Punjabi-language newspaper Ajit Weekly — Considerable litigation between appellant, respondents over use of Ajit name, stylized depiction thereof — Parties producing partial settlement agreement (PSA) incorporated into order issued in 2009 by United States District Court for the Eastern District of New York — PSA providing, inter alia, limited license to defendants to use Ajit Daily logo — While PSA not containing release of respondents from acts of copyright infringement pre-dating its execution, providing complete defence to any claims of infringement based on partial licences granted by PSA — PSA to be governed by laws of New York, New York courts retaining jurisdiction over interpretation, implementation of PSA — Appellant alleging in F.C. that respondents infringing copyright in Ajit Daily logo commencing in 1995, that in misappropriating Ajit Daily logo respondents engaging in passing off in violation of Trade-marks Act, R.S.C., 1985, c. T-13, s. 7(b) — F.C. decision dismissing appellant’s copyright claim set aside — Not entirely clear why F.C. dismissed copyright claim — F.C. erring: in relying on lack of evidence about American law as providing basis for dismissal of appellant’s claim; in offering fact of current compliance with PSA as reason for dismissing claim, as current compliance with PSA irrelevant to claim for copyright infringements occurring before 2009; in deferring dispute to New York courts on its own motion, as a court cannot decline to hear dispute falling within its jurisdiction based on its belief that another forum more appropriate — As to passing off claim, F.C. failing to apply correct test for assessment of goodwill — F.C. also not considering several central factors in assessing issue of distinctiveness — Finally, F.C.’s findings in respect of damages erroneously premised on its erroneous goodwill determination, could not stand — Appeal allowed.
Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd. (A-570-14, 2016 FCA 69, Gleason J.A., reasons for judgment dated March 2, 2016, 15 pp.)