T-2043-85
Jeffrey Rogers Knitwear Productions Limited and
Jeffrey Rogers Fashions Canada Inc. (Plaintiffs)
v.
R.D. International Style Collections Ltd.
(Defendant)
Trial Division, Dubé J.—Montreal, September 30;
Ottawa, October 4, 1985.
Copyright — Application for interlocutory injunction
restraining defendant from selling copy of artistic work "Dia-
mond Jacquard" — Defendant's sweaters bearing reproduc
tions of plaintiffs' artistic work — Federal Court granting
interlocutory injunction where clear violation of Copyright Act
— Design used as pattern to be multiplied by industrial
process covered by Industrial Design Act not Copyright Act —
Under R. 11(1) design deemed to be used for such purpose
where (1) reproduced in more than 50 single articles and (2)
applied to specified goods — Whether "and" in R. 11(1) to be
read disjunctively thereby excluding plaintiffs from protection
of-Copyright Act — Conflicting authorities — Impossible for
any design to meet all criteria in paras. 11(1)(a) and (b) —
Interpretation effectively barring all registrations under
Industrial Design Act — Federal Court decisions to effect
"and" to be read conjunctively binding — Interlocutory
injunction granted in any event in view of blatant violation of
plaintiffs' design and serious issue to be tried — Copyright
Act, R.S.C. 1970, c. C-30, ss. 36, 45, 46(1),(2) — Industrial
Design Act, R.S.C. 1970, c. I-8 — Industrial Design Rules,
C. R. C., c. 964, R. 11(1).
CASES JUDICIALLY CONSIDERED
FOLLOWED:
Royal Doulton Tableware Ltd. et al. v. Cassidy's Ltd.-
Cassidy's Ltée (1984), 1 C.P.R. (3d) 214 (F.C.T.D.);
Interlego AG et al. v. Irwin Toy Ltd. et al. (1985), 3
C.P.R. (3d) 476 (F.C.T.D.); Bayliner Marine Corp. v.
Doral Boats Ltd. (1985), 5 C.I.P.R. 268 (F.C.T.D.).
CONSIDERED:
Universal City Studios, Inc. v. Zellers Inc., [1984] 1 F.C.
49; (1983), 73 C.P.R. (2d) 1 (T.D.); Horn Abbot Ltd. v.
W.B. Coulter Sales Ltd. (1984), 1 C.I.P.R. 97
(F.C.T.D.); International Business Machines Corpora
tion v. Ordinateurs Spirales Inc., [1985] 1 F.C. 190
(T.D.); Duomo Inc. v. Giftcraft Ltd. (1984), 3 C.I.P.R.
70 (F.C.T.D.).
REFERRED TO:
American Cyanamid Co v Ethicon Ltd, [1975] 1 All ER
504 (H.L.); Con Planck, Ld. v. Kolynos, Incorporated,
[1925] 2 K.B. 804; King Features Syndicate, Incorpo
rated v. Kleeman (O. & M.) Ld., [1941] A.C. 417 (H.L.);
Eldon Industries Inc. v. Reliable Toy Co. Ltd. and
National Sales Incentives Ltd. (1964), 44 C.P.R. 239
(Ont. H.C.); Eldon Industries Inc. v. Reliable Toy Co.
Ltd., [1966] 1 O.R. 409 (C.A.).
COUNSEL:
François Guay and Robert Brouillette for
plaintiffs.
George Glezos and Richard S. Levy for
defendant.
SOLICITORS:
Lapointe Rosenstein, Montreal, for plaintiffs.
Adessky, Kingstone, Montreal, for defendant.
The following are the reasons for order ren
dered in English by
Duet J.: This application is for an interlocutory
injunction restraining the defendant from manu
facturing or selling any copy of the artistic work
"Diamond Jacquard" until trial or other disposi
tion of this matter.
The statement of claim filed with the motion
alleges that the plaintiff Jeffrey Rogers Knitwear
Productions Limited ("U.K.") is the owner of the
copyright "Diamond Jacquard", style no. KP5570,
registration no. 346189, registered in Canada on
September 18, 1985. The plaintiff Jeffrey Rogers
Fashions Canada Inc. ("Canada") is the exclusive
Canadian distributor of U.K.'s garments and the
exclusive Canadian licensee of its copyright. The
plaintiffs claim that the defendant has imported
from England and is selling to retaillers in Canada
various sweaters under the label "Razzle Dazzle"
which bear reproductions of the artistic work
above-referred to.
The affidavit evidence and the exhibits filed at
the hearing show clearly that the defendant has
sold a sweater to Sears which is obviously a
"knock-off' of a "Diamond Jacquard" sweater.
The pattern of one sweater is merely the reverse of
the pattern of the other sweater bearing the style
number KP5570.
It is trite law that, generally, in matters of
injunctions the applicant must make out a fair
prima facie case and must make out irreparable
injury. Where the opposite party shows a bona fide
arguable case to be tried, the Court must deal with
the balance of convenience as between the parties.
Since the decision of Lord Diplock speaking for
the House of Lords in American Cyanamid Co v
Ethicon Ltd,' the prima facie element criterion
has been more broadly defined as "a serious ques
tion to be tried".
However, in matters of clear violations of copy
rights registered under the Copyright Acte the
jurisprudence of the Federal Court has been to
grant interlocutory injunctions without concerning
itself with irreparable injury or the balance of
convenience. In Universal City Studios, Inc. v.
Zellers Inc., 3 Walsh J. restrained the defendant
from further purchases and sales of "E.T." dolls
stating at page 60 F.C.; 10 C.P.R.:
The protection of industrial property rights from counterfeiting
is an increasingly important question. In principle these rights
should be protected whether or not breach of them causes
serious damages.
In Horn Abbot Ltd. v. W.B. Coulter Sales Ltd.,"
Cattanach J. restrained the distribution of games
as infringing the plaintiffs copyright in the game
"Trivial Pursuit". At pages 107-108 he said:
In the case of copyright actual damage need not be proved.
This is because the right of the owner of a copyright is not
measured by the amount of the actual damage suffered. Copy
right being a species of property the owner is entitled to
protection of that property. If infringement is proven an injunc
tion will issue without proof of actual damage.
In International Business Machines Corpora
' [1975] 1 All ER 504 (H.L.).
2 R.S.C. 1970, c. C-30.
3 [1984] 1 F.C. 49; (1983), 73 C.P.R. (2d) 1 (T.D.).
(1984), 1 C.I.P.R. 97 (F.C.T.D.).
tion v. Ordinateurs Spirales Inc.,' Reed J. dealt
with the plaintiffs' copyright in a computer pro
gram entitled the "IBM Personal Computer Basis
Input Output System-1.0". She found that it
would be difficult to conclude that the plaintiffs
would suffer irreparable harm but [at page 206]:
... because of the encouragement withholding an injunction
would give to many others to enter into the field of importing
and selling the computers containing the program in which the
plaintiff holds a certificate of copyright—a floodgates effect.
Counsel for the plaintiff graphically described this as "death by
1000 cuts".
In Duomo Inc. v. Giftcraft Ltd., 6 Strayer J.
dealt with copyrights of photographs of His Holi
ness Pope John Paul II. He said at pages 74 and
75:
I am therefore satisfied that a strong prima facie case has
been made out and that in the circumstances it is not necessary
to consider further the balance of convenience. I would there
fore be prepared to grant the injunction on this basis alone.
I am inclined to the view, however, that in copyright cases
the exclusivity of copyright should be protected whether or not
its infringement can be compensated for by damages.
Under section 36 of the Copyright Act, every
register of copyrights is evidence of the particulars
entered therein and a certificate of registration of
copyright in a work is evidence that copyright
subsists in the work and that the person registered
is the owner of such copyright. The plaintiffs filed
at the hearing such a certificate which is prima
fade evidence of their ownership of the artistic
work "Diamond Jacquard".
Consequently, my disposition would be to grant
forthwith an interlocutory injunction to restrain
this blatant violation of the plaintiffs' copyright.
However, the following argument presented by the
defendant's counsel deserves serious consideration.
Under section 45 of the Copyright Act, no
person is entitled to copyright in any artistic work
otherwise than in accordance with the Act. Sub
s [1985] 1 F.C. 190 (T.D.).
6 (1984), 3 C.I.P.R. 70 (F.C.T.D.).
section 46(1) provides that the Act does not apply
to designs capable of being registered under the
Industrial Design Act,' except designs that are not
intended to be used as patterns to be multiplied by
any industrial process. Subsection 46(2) provides
that general rules under the Industrial Design Act
may be made for determining conditions under
which a design shall be deemed to be used for such
purposes as aforesaid. Rule 11(1) of the Industrial
Designs Rules [C.R.C., c. 964] reads as follows:
11. (1) A design shall be deemed to be used as a model or
pattern to be multiplied by any industrial process within the
meaning of section 46 of the Copyright Act,
(a) where the design is reproduced or is intended to be
reproduced in more than 50 single articles, unless all the
articles in which the design is reproduced or is intended to be
reproduced together form only a single set as defined in
subsection 2; and
(b) where the design is to be applied to
(i) printed paper hangings,
(ii) carpets, floor cloths, or oil cloths manufactured or sold
in lengths or pieces,
(iii) textile piece goods, or textile goods manufactured or
sold in lengths or pieces, and
(iv) lace, not made by hand.
The defendant's contention is that the word
"and" linking paragraph 11(1)(a) to paragraph
11(1) (b) is to be read disjunctively: therefore,
since the plaintiffs' design is obviously intended to
be reproduced in more than 50 sweaters, it shall be
deemed to be used as a pattern to be multiplied by
any industrial process within the meaning of sec
tion 46 of the Copyright Act. Consequently, said
design is capable of being registered under the
Industrial Design Act and the Copyright Act does
not apply to it. The obvious conclusion of that
proposition is that the plaintiffs have no copyright
under the Copyright Act and, there being no alle
gation that the design is registered under the
Industrial Design Act, the plaintiffs are not en
titled to an injunction.
R.S.C. 1970, c. I-8.
The English jurisprudences and two Ontario
Court decisions 9 would appear to support that
contention. Three recent decisions 10 of this Court
go the other way. Two articles published in the
Intellectual Property Journal of February 1985"
strongly criticize the Federal Court's position in
this matter.
With the benefit of the arguments that I heard,
I would be inclined to differ, with respect, from my
two esteemed colleagues on the construction of
Rule 11(1). It would appear to me that if a design
must meet all the criteria in paragraph 11(1)(a)
and in paragraph 11(1)(b) so as to be deemed to
be a pattern to be multiplied by an industrial
process, then no design can possibly qualify and
therefore no design would have to be registered
under the Industrial Design Act. In other words, I
cannot see how a design can be reproduced in
more than 50 articles and be applied as well to
paper hangings, carpets, textile piece goods and
lace not made by hand. Such an interpretation of
the Rule would effectively bar any and all registra
tions under the Industrial Design Act. That cannot
have been the intention of Parliament.
Of course, normally, "and" is conjunctive, "or"
is disjunctive, but to carry out the intention of the
legislation it is at times necessary to read "and" as
8 Con Planck, Ld. v. Kolynos, Incorporated, [1925] 2 K.B.
804 and King Features Syndicate, Incorporated v. Kleeman (O.
& M.), Ld., [1941] A.C. 417 (H.L.).
9 Eldon Industries Inc. v. Reliable Toy Co. Ltd. and Nation
al Sales Incentives Ltd. (1964), 44 C.P.R. 239 (Ont. H.C.) and
Eldon Industries Inc. v. Reliable Toy Co. Ltd., [1966] 1 O.R.
409 (C.A.).
10 Royal Doulton Tableware Ltd. et al. v. Cassidy's Ltd.-
Cassidy's Ltée (1984), 1 C.P.R. (3d) 214 (F.C.T.D.); Interlego
AG et al. v. Irwin Toy Ltd. et al. (1985), 3 C.P.R. (3d) 476
(F.C.T.D.) and Bayliner Marine Corp. v. Dorai Boats Ltd.
(1985), 5 C.I.P.R. 268 (F.C.T.D.).
" "Royal Doulton Tableware Ltd. v. Cassidy's Ltd. Two
Views Copyright: Must Patterns for China Be Protected By
Industrial Design Registrations?", p. 171, William L. Hay-
hurst, Q.C., Of Ridout & Maybee, Toronto and "Judicial
Repeal of the Industrial Design Act?", p. 175, Dan Hitchcock,
Of Riches, McKenzie & Herbert, Toronto.
being disjunctive. 12 Rule 11(1) is a deeming provi
sion. As such, it lists all the conditions under
which a design is deemed to be used as a pattern
that is capable of being registered under the
Industrial Design Act: they are condition (1)(a)
and (or) condition (1)(b)(i), (ii), (iii), and (or)
(iv). In my view, a design under any of those
conditions is capable of being registered.
I understand that at least one of the Federal
Court decisions is presently being appealed. Hope
fully, a decision from the Court of Appeal will be
rendered before the trial of the instant action is
heard. However, for the present purposes of this
interlocutory injunction, judicial administration
would require that I follow the recent decisions of
this Court. In any event, in view of the blatant
violation of the plaintiffs' design by way of knock-
off by the defendant and it being obvious that
there is a serious question to be tried, I will issue
an order enjoining the defendant from manufac
turing and selling copies of the artistic work "Dia-
mond Jacquard" until trial or other disposition of
this matter. I will not, however, issue the other
order sought by the plaintiffs, in a separate
motion, for seizure before judgment of the offend
ing articles still in the possession of the defendant.
ORDER
IT IS HEREBY ORDERED that the defendant R.D.
International Style Collections Ltd. be restrained
from manufacturing, selling, exposing or offering
for sale or hire, distributing either for the purposes
of trade or otherwise, exhibiting in public, import
ing for sale or hire in Canada any copy or substan
tial copy of the artistic work "Diamond Jacquard"
in any material form whatsoever until trial or
other disposition of this matter. Costs to the
plaintiffs.
12 The Interpretation of Statutes, 12th ed. (London: Sweet &
Maxwell, 1969), pp. 232-233.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.