Copyright Decisions

Motion to Stay Pending Addition of Copyright Owners to Action Dismissed
Spanski Enterprises, Inc. et al. V.IMB+ Records Inc. et al. 2013 ONSC 5382

The Defendants brought a motion to stay the portion of the action commenced in the Ontario Superior Court of Justice addressing claims under the Copyright Act, until the copyright owners are added as parties to the action or agree to be bound by any decision of the Court and authorize the Plaintiffs to be their representatives in the action. The Plaintiffs opposed the motion.

The Court dismissed the motion on the basis that the interests of justice do not require the copyright owners to be parties, as set out in section 41.23(2)(c) of the Copyright Act. The Court noted that the Plaintiffs have contractual obligations with respect to the copyright owners and that the Defendants delayed in bringing this motion.

Other Decisions of Interest

Section 8 Damages Claim Allowed; Infringement not Proven
Apotex v. Pfizer 2013 FC 493 Drug: azithromycin

Apotex claimed damages from Pfizer pursuant to s. 8 of the Patented Medicines (Notice of Compliance) Regulations (the NOC Regulations). The hearing that resulted in this decision was solely to determine whether Apotex had a valid claim to damages. The Judge held that they did.

The Court held that it was bound by the previous construction of the patent, unless there were strong reasons to depart from that construction. The Court held that there were none. The Court also held that s. 8 did not create a free-standing right of action separate from the proceeding brought pursuant to s. 6 of the NOC Regulations. The second person is not permitted to, in effect, serve a second NOA on the first person by way of the s. 8 proceeding. Entirely new allegations of invalidity or non-infringement are not permitted. Thus, as the original NOA did not allege invalidity of the patent, Apotex’ invalidity claims were not heard by the Court.

However, Pfizer was entitled to test Apotex’ product now that it is on the market, and the Court heard evidence on that issue. The Court held that this evidence only amounted to the possibility that Apotex’ tablets may have contained a small amount of infringing material before the expiry of the patent. This was not enough to support a conclusion of infringement on a balance of probabilities. Thus, the Court allowed Apotex’ claim for s. 8 damages. The assessment will be conducted at a later date.

Claim to Disgorgement of Profits Denied by Ontario Court of Appeal
Apotex Inc. v. Abbott Laboratories, Limited 2013 ONCA 555 Drug: lansoprazole

Apotex appealed in the Ontario Court of Appeal from a partial summary judgment that dismissed its unjust enrichment claim for the disgorgement of the respondents’ profits or revenues. Our summary of the decision of the Ontario Superior Court of Justice is here.

The Court dismissed Apotex’ first argument that the claim for unjust enrichment should be allowed to proceed on the basis that the Settlement Agreement, which governs damages between the parties for a particular period of time, may be unenforceable. The Court noted that, if the Settlement Agreement is unenforceable, Apotex’ deprivation can be no more than the damages calculated according to section 8 of the Patented Medicines (Notice of Compliance) Regulations, which Apotex conceded does not include disgorgement.

Apotex also argued broadly that the claim of unjust enrichment for disgorgement of profits or revenues should be allowed. The Court noted:

In our view, the simple answer to that argument is that the profits or revenues earned by the respondents for which the appellant claims disgorgement are due to the operation of the regulatory scheme of the Patent Regulations. The respondents’ right to be in the market to the exclusion of the appellant and therefore to earn its profits or revenues is that provided for by the Patent Regulations. Those Regulations constitute a valid juristic reason for the respondents’ profits and revenues for the period in question. This precludes the appellant’s claim for disgorgement.

The appeal was dismissed.

Other Industry News

The Competition Bureau has launched a public consultation, seeking input from the public to identify areas where the Bureau could play a role in advocating for increased competition. It has published an online Advocacy Suggestion Form. The consultation is open until November 8, 2013.


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property