Federal Court Grants Summary Judgment And Awards $24,000 In Statutory Damages For Infringement Of Copyright In Business Forms

• Published date: 21 April 2021
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Bereskin & Parr LLP
• Author: Mr Adam Bobker and Bruna Kalinoski

On April 14, 2021, the Federal Court granted a motion for summary judgment in Patterned Concrete Mississauga Inc. v. Bomanite Toronto Ltd., 2021 FC 314 in favour of the plaintiff, Patterned Concrete Mississauga Inc. ("Patterned Concrete"), in the context of a copyright infringement action brought against its competitor, Bomanite Toronto Ltd. ("Bomanite"). The plaintiff asserted the copyright subsisting in a quotation form, a contract form, and a limited warranty certificate (collectively, "the Works") developed for its business in providing decorative services for patios, paths, and driveways for residential customers. The plaintiff sought statutory damages for past infringement under section 38.1 of the Copyright Act, RSC 1985, c C-42 (the "Act"), as well as punitive damages and an order enjoining the defendant from infringing copyright in the Works.

The Works were developed in-house by one of Patterned Concrete's co-owners in 2009. The company's employees had access to and used the Works in carrying out their roles for providing Patterned Concrete's customers with estimates, quotation, and contracts for their services. In 2015, a long-time employee of Patterned Concrete moved to Bomanite and about two years after Patterned Concrete learned that Bomanite was using a similar quotation form, contract form, and limited warranty certificate substantially reproducing the Works.

The Court found there were no genuine issues that would require a trial in the proceeding, and in the motion for summary judgment it decided the following issues: (a) whether copyright subsisted in the Works and was owned by Patterned Concrete; (b) whether Bomanite infringed copyright in the Works; and (c) what was the appropriate remedy.

The first point of divergence between the parties was whether Patterned Concrete could rely in its copyright registration for the Works pursuant to s. 53 of the Copyright Act, having obtained the registration certificates in contemplation of litigation contemporaneously with the sending of its demand letter to Bomanite in June 2017, some eight years after the Works were first published in 2009. Rather than viewing this fact in isolation, Justice Pallotta of the Federal Court analyzed leading cases of the Supreme Court of Canada and the Federal Court of Appeal and clarified that "the circumstances that led to Patterned Concrete's applications for registration are factors that should be considered in weighing all of the evidence tending to prove or disprove the subsistence of copyright and its...