Apple Computer Inc. v. Minitronics of Canada Ltd. et al., (1988) 17 F.T.R. 37 (TD)

• Judge: Strayer, J.
• Court: Federal Court (Canada)
• Case Date: January 12, 1988
• Jurisdiction: Canada (Federal)
• Citations: (1988), 17 F.T.R. 37 (TD)

Apple Computer v. Minitronics of Can. (1988), 17 F.T.R. 37 (TD)

MLB headnote and full text

Apple Computer Inc. (plaintiff) v. Minitronics of Canada Limited, carrying on business as Minitronics Computers Centres, Angel Li Lam, Jan Edmond, O.S. Micro Systems Inc., Lami Yee Lam, David Kuo Tai Wang, Jack Liu, Trident Technology Inc., carrying on business as Trident, Wai Lin Eng, Pacific Rim Electronics Imports Inc., carrying on business as Pacific Rim Electronics Inc., Stan Kozdrowski, Stanley G. Kozdrowski, Gentek Marketing Inc., carrying on business as Gentek Computers Inc. and as Gentek Computers, Mitchell Freedman, Jeff Freedman, Brian Mintz, 546665 Ontario Limited, carrying on business as Viva Computers, Pulse Computers Inc., Pulse, Pulse Computers, Ordinateur Microcom Computers, Key Creative Consultants: Richard Douglas Williams, Mary Edythe Baker, K. Scott Baker, Ron Wicksey, Martin P. Kane, carrying on business as Compusound Systems of Canada and Metropolitan Separate School Board (defendants)

(No. T-2053-85)

Indexed As: Apple Computer Inc. v. Minitronics of Canada Ltd. et al.

Federal Court of Canada

Trial Division

Strayer, J.

January 12, 1988.

Summary:

Apple commenced an action against corporate and individual defendants, alleging that they imported, assembled, distributed, sold, etc. certain computers that infringed Apple's copyright in certain of its programs and the design of its case and that the use of a certain logo was confusing with Apple's logo, thereby infringing its trademark. Apple obtained an interim injunction prohibiting the defendants from:

"(a) importing, distributing, assembling, manufacturing, advertising, offering for sale, demonstrating and selling computers and computer components,

(i) which contain a copy or substantial copy of the literary works Apple IIe Programme, and Enhanced Apple IIe Programme, being the plaintiff's copyrighted works which are the subject matter of Canadian Copyright Registrations 444,381 and 444,382 respectively, or alternatively,

(ii) which contain contrivances by means of which the said copyrighted works may be mechanically performed or delivered.

"(b) importing, distributing, assembling, manufacturing, advertising, offering for sale, demonstrating and selling computers which appear to be or in fact are copies in three dimensions of the plaintiff's two dimensional drawings and plans for the cases of its Apple II, Apple IIe, and Enhanced Apple IIe computers or a substantial part thereof.

"(c) importing, distributing, assembling, manufacturing, advertising, offering for sale, demonstrating and selling computers having applied thereto a trademark which is confusing with the trademark 'Apple Logo and Design' forming the subject matter of Canadian Trademark Registration 264,154; ..." The Federal Court of Appeal dismissed an appeal from the granting of the injunction and the injunction was continued pending trial by order of Giles, A.S.P. Apple obtained an order under rule 355 requiring those companies and individuals allegedly breaching the injunction to show cause why they should not be held in contempt. One company and one individual pleaded guilty to contempt. The remaining companies and individuals claimed they did not receive adequate notice of the injunctions, the injunctions were unclear or ambiguous and that their present activities did not violate the actual terms of the injunction.

The Federal Court of Canada, Trial Division, in paragraphs 1 to 42 below, found three of the companies and four individuals to be in contempt of court. The court reserved judgment on the appropriate penalties.

The Federal Court of Canada, Trial Division, in a subsequent decision reported at paragraphs 43 to 48 below, imposed the following fines: the company and individual that pleaded guilty were each fined $1,000.00; the remaining three individuals were fined $5,000.00 each (the maximum); and the remaining two companies were fined $30,000.00 in total.

Contempt - Topic 690

What constitutes - Judgments and orders - Injunctions - Disobedience of - Apple Computer obtained an injunction enjoining certain competitors from importing, assembling, distributing, selling, etc. certain computers that infringed Apple's copyright in certain of its programs and the design of its case and from using a logo that infringed Apple's trademarked logo - The Federal Court of Canada, Trial Division, found the competitors guilty of contempt for disobeying the injunction.

Contempt - Topic 2648

Defences - Lack of notice of disobeyed court order - Defendants alleged to have disobeyed an injunction claimed a lack of adequate notice of the order - The defendants were aware of the order notwithstanding a lack of personal service - The Federal Court of Canada, Trial Division, held that actual notice was proved and personal service was not required - The court addition ally stated that "knowledge of the order by, or proof of its service on, the lawyer for a party in a civil matter in the Federal Court is sufficient to fix that party with knowledge of the order for purposes of a subsequent prosecution for contempt of court" - See paragraphs 9 to 14.

Contempt - Topic 3315

Punishment - Fines - Three companies and four individuals were found guilty of contempt following disobedience of an interim injunction - The Federal Court of Canada, Trial Division, imposed $1,000.00 fines on one company and one individual, both of whom pleaded guilty - The remaining three individuals, who defended the proceedings and whose disobedience was more blatant, were fined $5,000.00 each (the maximum) - The remaining two companies were fined $30,000.00 in total - See paragraphs 43 to 47.

Injunctions - Topic 3245

The order - Contents - Errors - Effect of - An injunction prohibited the copying of copyrighted works that were the subject of copyright registration "444,382" - The proper registration number was "344,382" - The number was correctly stated in one paragraph of the statement of claim and incorrectly stated twice in the prayer for relief - The Federal Court of Canada, Trial Division, held that the error was not fatal to contempt proceedings for disobedience of the injunction - The typographical error did not mislead the defendants, who knew at all times what they were enjoined from doing - See paragraphs 22 to 23.

Practice - Topic 3135

Applications and motions - Motions - Evidence - Federal Court Rules, rule 319(2) - Rule 319(2) provided that "a motion shall be supported by affidavit as to all the facts on which the motion is based that do not appear from the record" - The Federal Court of Canada, Trial Division, held that the "record" on a show cause motion for contempt included those elements of the court file relevant to the issues before the court and that documents on the court file may be assumed to be what they purport to be unless proven to the contrary - See paragraph 34.

Words and Phrases

Record - The Federal Court of Canada, Trial Division, referred to the meaning of the word "record", as found in rule 319(2) of the Federal Court Rules - See paragraph 34.

Cases Noticed:

Beloit Canada Limitee/Limited et al. v. Valmet Oy (1986), 6 F.T.R. 241; 11 C.P.R.(3d) 470 (F.C.T.D.), refd to. [para. 9].

Selection Testing Consultations International Ltd. v. Humanex International Inc. et al. (1987), 9 F.T.R. 72 (F.C.T.D.), refd to. [para. 9].

Baxter Travenol Laboratories of Canada Ltd. et al. v. Cutter (Canada) Ltd. (1984), 1 C.P.R.(3d) 433, refd to. [para. 9].

Moose Mountain Lumber and Hardware Co. v. Paradis (1910), 14 W.L.R. 20 (Sask. S.C.), refd to. [para. 9].

Churchman et al. v. Joint Shop Stewards' Committee, [1972] 3 All E.R. 603 (C.A.), refd to. [para. 9].

Glazier v. Union Contractors Ltd. et al. (1960), 129 C.C.C. 150 (B.C.C.A.), refd to. [para. 9].

Canada Metal Co. Ltd. et al. v. Canadian Broadcasting Corp. et al. (1975), 48 D.L.R.(3d) 641 (Ont. H.C.), affd. 11 O.R.(2d) 167 (Ont. C.A.), refd to. [para. 9].

Bhatnager v. Minister of Employment and Immigration et al. (1988), 82 N.R. 360 (F.C.A.), revsing [1986] 2 F.C. 3; 2 F.T.R. 18 (F.C.T.D.), appld. [para. 12].

Apple Computer Inc. et al. v. Mackintosh Computer Ltd. et al. (No. 2) (1987), 8 F.T.R. 277; 14 C.P.R.(3d) 1 (F.C.T.D.), refd to. [para. 20].

Baxter Laboratories of Canada Ltd., Travenol Laboratories Inc. and Baxter Travenol Laboratories Inc. v. Cutter (Canada) Ltd. (1983), 50 N.R. 1; 75 C.P.R.(2d) 1 (S.C.C.), appld. [para. 22].

Bayliner Marine Corp. v. Doral Boats Ltd. (1986), 67 N.R. 139; 10 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 26].

Oshawa Group Ltd. v. Creative Resources Co. Ltd. (1982), 46 N.R. 426; 61 C.P.R.(2d) 29 (F.C.A.), refd to. [para. 30].

Leaf Confection Ltd. v. Maple Leaf Gardens Ltd. (1986), 7 F.T.R. 72; 12 C.P.R.(3d) 511 (F.C.T.D.), refd to. [para. 30].

Clairol International Corporation et al. v. Thomas Supply & Equipment Co. Ltd. et al. (1968), 38 Fox's P.C. 176 (Ex. Ct.), refd to. [para. 31].

Bombardier Ltd. v. British Petroleum Co. Ltd. et al. (1973), 10 C.P.R.(2d) 21 (F.C.A.), refd to. [para. 31].

Rank Film Distributors Ltd. et al. v. Video Information Centre et al., [1981] 2 All E.R. 76 (H.L.), refd to. [para. 37].

Canada v. Amway Corp. et al. (1986), 72 N.R. 211; 34 D.L.R.(4th) 201 (F.C.A.), refd to. [para. 37].

Director of Investigation and Research and Chairman of the Restrictive Trade Practices Commission v. Ziegler et al. (1983), 51 N.R. 1; 81 C.P.R.(2d) 1 (F.C.A.), refd to. [para. 37].

Thomson Newspapers Ltd. et al. v. Director of Investigation and Research (1986), 17 O.A.C. 330; 34 D.L.R.(4th) 413 (C.A.), refd to. [para. 37].

R. v. Altseimer (1982), 38 O.R.(2d) 783 (C.A.), refd to. [para. 37].

Steinberg v. R., [1931] O.R. 222 (Ont. C.A.), affd. [1931] S.C.R. 421, refd to. [para. 39].

R. v. MacLeod, [1968] 2 C.C.C. 365 (P.E.I.C.A.), refd to. [para. 39].

Pratte v. Maher et al., [1965] 1 C.C.C. 77 (Que. C.A.), refd to. [para. 39].

Tilco Plastics Ltd. v. Skurjat et al., [1967] 1 C.C.C. 131 (Ont. H.C.), refd to. [para. 39].

R. v. Corbett (1973), 1 N.R. 258; 42 D.L.R.(3d) 142 (S.C.C.), refd to. [para. 39].

Ouellet (No. 2), Re (1976), 72 D.L.R.(3d) 55 (Que. C.A.), refd to. [para. 45].

Statutes Noticed:

Federal Court Rules, rule 319(2) [para. 34]; rule 327 [para. 35]; rule 355 [para. 1]; rule 482 [para. 35]; rule 1903, rule 1905, rule 2500 [para. 9].

Trade Marks Act, R.S.C. 1970, c. T-10, sect. 2, sect. 4, sect. 6 [para. 31].

Canadian Charter of Rights and Freedoms, 1982, sect. 8, sect. 11(c), sect. 13, sect. 24 [para. 36].

Authors and Works Noticed:

Miller, Contempt of Court (1976), pp. 226 [para. 11]; 243 [para. 10].

Borrie and Lowe, Law of Contempt (1983), p. 304 [para. 11].

Counsel:

I.M. Hughes, J.I. Etigson and A.S. Schorr, for the plaintiff;

G.K. Martin, for Minitronics of Canada Limited and Angel Li Lam;

D. Zack and R. MacFarlane, for O.S. Micro Systems Inc. etc., and Pacific Rim Electronics Imports Inc.

Solicitors of Record:

I.M. Hughes, Concord, Ontario, for the plaintiff;

Fitzsimmons, MacFarlane, Toronto, Ontario, for Minitronics of Canada Limited, O.S. Micro Systems Inc., etc., and Pacific Rim Electronics Imports Inc.;

Day, Wilson, Campbell, Toronto, Ontario, for Metropolitan Separate School Board;

Pierce, McNeely, for 546665 Ontario Limited;

Henry, Brown, Green and Siegel, Toronto, Ontario, for Gentek Marketing Inc.

This case was heard on October 27-30 and November 2-6, 1987, before Strayer, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on January 12, 1988.