2572495 Ontario Inc. v. Terlin Construction Ltd.

2572495 Ontario Inc. v. Terlin Construction Ltd.

The copyright registration (Canadian copyright registration No. 1169407) is invalid because the artistic work registered is a substantial copy of packaging created by Terlin employee Teresa Stirling in the course of her employment, making Terlin the first owner under s.13(3) of the Copyright Act; no written assignment to VPC exists under s.13(4); accordingly the registration is expunged and related pleadings struck. The competing issues concerning ownership of the industrial designs and trademarks raise credibility and factual disputes that are unsuitable for summary determination and must proceed to trial.

Citation
2024 FC 1366
Parties
Plaintiff / Defendant by Counterclaim: 2572495 Ontario Inc.; Defendant / Plaintiff by Counterclaim: Terlin Construction Ltd.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
30 August 2024
Procedural Posture
Federal Court Intellectual Property Action / Summary Judgment Motion (decision)
Outcome
Motion granted in part: Canadian copyright registration No. 1169407 expunged; related paragraphs of the Amended Statement of Claim struck; remainder of motion dismissed.
Legal Topics
Ownership of Intellectual Property, Summary Judgment Test, Assignment of Copyright, Employee Created Works, Registration Rectification/expungement, Common Law Trademark Rights
Source Language
English
Copyright Industrial Design Trademark Civil Procedure Contract Ownership of Intellectual Property Summary Judgment Test Assignment of Copyright +3 more

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Parties

2572495 Ontario Inc.

Plaintiff / Defendant by Counterclaim

Terlin Construction Ltd.

Defendant / Plaintiff by Counterclaim

Procedural Posture

Federal Court Intellectual Property Action / Summary Judgment Motion (decision)

Legal Issues

  1. 1 What is the applicable test for summary judgment?
  2. 2 Is VPC the lawful owner of the copyright claimed in Canadian copyright registration No. 1169407?
  3. 3 Is VPC the lawful owner of the EZGARD industrial design registrations?

Ratio Decidendi

The copyright registration (Canadian copyright registration No. 1169407) is invalid because the artistic work registered is a substantial copy of packaging created by Terlin employee Teresa Stirling in the course of her employment, making Terlin the first owner under s.13(3) of the Copyright Act; no written assignment to VPC exists under s.13(4); accordingly the registration is expunged and related pleadings struck. The competing issues concerning ownership of the industrial designs and trademarks raise credibility and factual disputes that are unsuitable for summary determination and must proceed to trial.

Court Disposition

Motion granted in part: Canadian copyright registration No. 1169407 expunged; related paragraphs of the Amended Statement of Claim struck; remainder of motion dismissed.

Orders

  • Canadian copyright registration No. 1169407 entitled "EZGARD Packaging with EZGARD and Design Mark" is invalid and expunged from the Register of Copyrights pursuant to Copyright Act s.57(4)(b)
  • Paragraphs 1(a)(i), 1(c)(i), 1(d), 1(f), 26, and 27 of the Amended Statement of Claim are struck