T-3725-79
Unipeixe-Exportadora de Peixe Limitada (Plain-
tiff)
v.
J. Gaspar et Fils Inc. (Defendant)
Trial Division, Walsh J.—Toronto, May 26;
Ottawa, May 29, 1980.
Practice — Motion to strike pleadings — Statement of
claim fails to show that plaintiff is entitled to protection of the
copyright in Canada, or the manner in which it claims to have
acquired ownership of the copyright — Motion to strike
statement of claim granted — Copyright Act, R.S.C. 1970, c.
C-30, ss. 4, 12(3),(4), 20(3).
MOTION.
COUNSEL:
Ivor M. Hughes for plaintiff.
Roger Hughes for defendant.
SOLICITORS:
Antflyck & Harrison, Toronto, for plaintiff.
Lapointe Rosenstein, Montreal, for defend
ant.
The following are the reasons for judgment
rendered in English by
WALSH J.: This is a motion pursuant to the
provisions of Rule 419(1) (a),(d) and (f) to strike
plaintiff's statement of claim. The amended state
ment of claim shows that plaintiff was incorpo
rated pursuant to the laws of Portugal and has an
office or place of business there, that it is carrying
on business as an exporter of food products includ
ing fresh, frozen and canned seafood at least since
as early as 1964, and for marketing same, has used
a unique design incorporating its name Unipeixe,
which design has the lettering so arranged as to
make it appear as if the word were a fish. The
statement of claim further states that it has caused
the copyright in the design to be transferred to it
and has continued to use it continuously while
exporting its products. The rest of the statement of
claim sets out that in May 1972 it entered into a
distributorship agreement with defendant giving
the latter exclusive distribution rights of plaintiff's
products in Canada and the United States and
that it instructed defendant to register the name
and design in plaintiff's name under the provisions
of the Canadian Trade Marks Act, R.S.C. 1970, c.
T-10. Despite this defendant registered it under its
own name. Plaintiff then terminated the distribu-
torship agreement. Defendant has refused to
cancel the registration of the trade mark in its
name and continues to use it in the sale of its food
products including packages of fresh, frozen and
canned seafood. The action is for infringement of
plaintiffs copyright in the artistic work "Unipeixe
and Design" and seeks an injunction and damages
or an accounting of profits.
The action as drafted lacks certain essentials
without which no judgment can be rendered in
plaintiffs favour, and this quite aside from the
question as to whether the Court has jurisdiction.
Section 4 of the Copyright Act' sets forth that in
order for a copyright to subsist in Canada the
author must at the date of making the work be a
British subject, or a citizen or subject of a foreign
country that has adhered to the Convention and
the Additional Protocol set out in Schedule II of
the Act, or resident within Her Majesty's Realms
and Territories. The protection can be extended to
foreign countries where the Minister certifies by
notice published in the Canada Gazette that that
country although not adhering to the Convention
and Additional Protocol has undertaken to grant
similar benefits of copyright to citizens of Canada
on substantially the same basis as to its own
citizens as those conferred by the Act.
There is no indication in the statement of claim
that Portugal adhered to the Convention or was
extended the benefits of it by the Minister. Fur
thermore the statement of claim refers to the
copyright and design having been transferred to
plaintiff with no indication who the original owner
of the copyright was and the manner in which the
rights under it were assigned to plaintiff. Plaintiff
invokes section 12(3) of the Act which provides
that when the author was in the employment of
some other person under a contract of service or
apprenticeship and the work was made in the
' R.S.C. 1970, c. C-30.
course of his employment the copyright rests in the
employer. There is no indication in the statement
of claim however that the author of the copyright
was in the employ of plaintiff or alternatively that
there was a proper assignment of the copyright
pursuant to section 12(4) of the Act. The other
allegations in the statement of claim seem to rest
on breach of contract by defendant in registering
as a trade mark "Unipeixe & Design" which
plaintiff claims belongs to it, despite having been
instructed to register it in the name of plaintiff. To
the extent that this claim arises from breach of
contract it could not be brought in the jurisdiction
of this Court, but that is not an issue which has to
be decided on the present motion. Plaintiff's claim
is restricted to infringement of copyright and does
not include any allegations of passing off.
Plaintiff contends that defendant's proper proce
dure is to seek particulars. It also invokes section
20(3) of the Act which provides that in an action
for infringement of copyright in which the defend
ant puts in issue either the existence of the copy
right or the title of the plaintiff thereto the work
shall be presumed to be a work in which copyright
exists and the author of it shall, unless the con
trary is proved, be presumed to be the owner of the
copyright. Plaintiff contends therefore that the
burden is on defendant to establish either that the
copyright does not exist in Canada, or that plain
tiff does not have title to it. I do not agree. There
is no question at this stage of proceedings of
defendant putting in issue the existence of the
copyright or the title of plaintiff therein since the
action has not yet been pleaded to. It is the
responsibility of a plaintiff to so draft its proceed
ings that, assuming that all the facts therein are
correct, as one must do on a motion of this sort,
judgment could be rendered in its favour. There is
no obligation on defendant, instead of submitting a
motion to strike to present a motion for particulars
to oblige plaintiff to correct its proceedings. The
proceedings as drawn do not show that plaintiff is
entitled to the protection of the copyright in
Canada, or the manner in which it claims to have
acquired ownership thereof and hence, as they
stand are radically defective. The motion to strike
plaintiff's amended statement of claim is therefore
granted with costs, under reserve of the right of
plaintiff to amend said proceedings within 30 days
hereof or such further delay as may be agreed to
by counsel or fixed by the Court.
ORDER
Plaintiff's amended statement of claim is struck
with costs under reserve of its right to amend same
within 30 days hereof or such further delay as may
be agreed to by counsel or extended by the Court.
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.