Trademark  Cases

Questions Ordered to be Answered on Appeal, and no Decision on Bifurcation Until After Plaintiff Makes Election of Damages or Profits
Casella Wines PTY Limited v. Constellation Brands Canada, Inc.,2015 FC 403

This is a trademark case regarding the plaintiff’s YELLOW TAIL & KANGAROO DESIGN. Constellation Brands brought two interlocutory motions before the Federal Court. First was an appeal from an order (2015 CF 263) requiring its representative to answer certain questions put to him on discovery. Second was a request for a bifurcation order to proceed on the merits only, with a subsequent reference for damages or profits if necessary.

The Court declined to overturn the first order, as it was a discretionary order that was not clearly wrong, and the result would have been the same even if it were to be considered de novo. The questions dealt with profits and expenses, and the provenance of the grapes used to make the defendant’s wines.

As for bifurcation, examinations for discovery were almost complete and the plaintiff had yet to elect for either an accounting of profits or damages. The Court was therefore not prepared to bifurcate at this time.

Copyright Cases

Consent to the Use of Copyrighted Material Not Required to be in Writing
King David Inc. v. Andrin Investment Ltd., 2015 ONSC 1935

The plaintiff sought partial summary judgment for an alleged breach of the Copyright Act. It related to the alleged use of copyrighted materials during the marketing phase of a residential construction project. The plaintiff argued that there was a legal requirement that a licence to use copyright material must be made in writing. However, the Court found that the statutory writing requirement only applies to conveyances of an interest in the copyright itself, and not merely to consent to the use of copyrighted material. As a result, the partial summary judgment motion was dismissed and $29,719 in substantial indemnity costs was awarded against the plaintiff.

Infringement of Work Found Where Newspaper Published Article Using Artwork Without Consent
Donglu v. Sinoquébec Media Inc.,
2015 QCCQ 2337

The plaintiff sued in Quebec Small Claims Court for breach of copyright against a newspaper owner who published an article about the plaintiff. Although the article was intended to be laudatory, the plaintiff was never contacted for the piece, and her artwork was used as a part of the article without her permission. The Court awarded $750 for the breach of copyright. ​


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property
Intellectual Property Litigation