Ital-Press Ltd. v. Sicoli et al., (1999) 170 F.T.R. 66 (TD)

• Judge: Gibson, J.
• Case Date: May 31, 1999
• Jurisdiction: Canada (Federal)
• Citations: (1999), 170 F.T.R. 66 (TD)

Ital-Press Ltd. v. Sicoli (1999), 170 F.T.R. 66 (TD)

MLB headnote and full text

Temp. Cite: [1999] F.T.R. TBEd. JN.113

Ital-Press Ltd. (plaintiff) v. Giuseppina Sicoli also known as Josephine Pino and also known as Josephine Sicoli and also known as Giuseppina Pino and all others unknown to the plaintiff who sell, advertise or distribute the Alberta Italian Telephone Directory 1994, Alberta Italian Yellow Directory Inc. and Il Nuovo Mondo Publishing Inc. (defendants)

(T-2908-94)

Indexed As: Ital-Press Ltd. v. Sicoli et al.

Federal Court of Canada

Trial Division

Gibson, J.

May 31, 1999.

Summary:

The plaintiff claimed to be the author of "L'unica Guida Telefonica Italiana per L'Ovest Canada" (the Guidas) and to be the owner of copyright therein. The Guidas contained, inter alia, telephone listings and block advertisements tailored to the Ital­ian/Canadian community. The plaintiff claimed that the defendants infringed the plaintiff's copyright by reproducing substan­tial parts of the Guidas in books entitled "Alberta Italian Telephone Directory 1994" and "Alberta Italian Telephone Directory 1995/96" (the Directories). The plaintiff also claimed that the defendants passed off the Directories and their related advertising services as the Guidas and the advertising services of the plaintiff. The plaintiff sought an injunction and damages, or alternatively, an accounting of profits, delivery up of copies of the Directories, punitive damages and solicitor and client costs.

The Federal Court of Canada, Trial Divi­sion, held that the Guidas were literary works which were sufficiently original to support a claim for copyright. The court also found that the defendants infringed the plaintiff's copyright where they copied a substantial part of the Guidas (both the telephone listings and the advertisements) to produce their Directories. The court also found that the defendant Sicoli was the directing mind of both corporate defendants and was personally liable for the infringe­ment together with the corporate defendants. The court issued a permanent injunction prohibiting the defendants from infringing the plaintiff's copyright. A further hearing was to be held to address the issues of dam­ages and/or profits, delivery up of copies of the Directories and punitive damages. The plaintiff's claim for passing off was dis­missed.

Editor's Note: For other decisions involving these parties see 112 F.T.R. 204 and 118 F.T.R. 299.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - The plaintiff claimed to be the author of "L'unica Guida Telefonica Italiana per L'Ovest Canada" (the Guidas) and to be the owner of copy­right therein - The Guidas contained, inter alia, telephone listings and block adver­tise­ments tailored to the Italian/Canadian community - The plaintiff claimed that the defendants infringed the plaintiff's copy­right by reproducing substantial parts of the Guidas in books entitled "Alberta Italian Telephone Directory 1994" and "Alberta Italian Telephone Directory 1995/96" (the Directories) - The Federal Court of Canada, Trial Division, held that the Guidas were literary works which were sufficiently original to support a claim for copyright and that the defendants infringed the plaintiff's copyright where they copied a substantial part of the Guidas (both the telephone listings and the advertisements) to produce their Directories - The individ­ual defendant was the directing mind of the corporate defendants and was per­sonally liable for the infringement together with the corporate defendants - See para­graphs 81 to 148.

Copyright - Topic 4406

Infringement of copyright - Parties liable - [See Copyright - Topic 1003 ].

Copyright - Topic 4495

Infringement of copyright - Acts consti­tut­ing an infringement - Copying or pho­to­copying literary works - [See Copyright - Topic 1003 ].

Copyright - Topic 4583

Infringement of copyright - Remedies - Injunctive relief - The Federal Court of Canada, Trial Division, granted a perma­nent injunction prohibiting the defendants from infringing the plaintiff's copyright - The court found that the form of injunction proposed by the plaintiff was not accept­able where it purported to enjoin named individuals who were known to the plain­tiff and whom the plaintiff did not add as defendants and where it purported to enjoin a broad range of actions that the court found did not infringe the plaintiff's copyright - See paragraphs 158 to 164.

Copyright - Topic 4583

Infringement of copyright - Remedies - Injunctive relief - The Federal Court of Canada, Trial Division, stated that "[w]hile it is not uncommon in matters such as this [copyright infringement action] to provide an injunction that extends to persons over whom a named defendant can be demon­strated to exercise some degree of control, I know of no authority for extending an injunction to named individuals who, while they might in the past have been subject to some control by a named defendant, are not themselves named defendants and who might, at the time the injunction issues or at some later time act entirely indepen­dent­ly from all named defendants" - See para­graph 162.

Injunctions - Topic 781

Granting an injunction - Persons against whom an injunction will be granted - General - [See both Copyright - Topic 4583 ].

Injunctions - Topic 6311

Particular matters - Injury to trade - Copy­right infringement - [See both Copy­right -Topic 4583 ].

Torts - Topic 5142

Interference with economic relations - Unfair competition - Passing off - Juris­dic­tion - [See Trademarks, Names and Designs - Topic 3068 ].

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Pas­sing off - The Federal Court of Canada, Trial Division, held that a plaintiff's claim with respect to passing off could not suc­ceed on the ground that the court lacked jurisdic­tion or, alternatively, on the ground that any basis of jurisdiction in the court had not been pleaded - Section 7 of the Trade-marks Act could not be invoked where no trade marks scheme was pleaded or estab­lished by evidence - The court also had no jurisdiction with respect to the common law action of passing off - To the extent that the court had jurisdiction in respect of the equivalent of the common law action of passing off, that jurisdiction had to be found in s. 7(b) of the Trade-marks Act - See paragraphs 149 to 157.

Cases Noticed:

Tele-Direct (Publications) Inc. v. Ameri­can Business Information Inc., [1998] 2 F.C. 22; 221 N.R. 113 (F.C.A.), consd. [para. 87, footnote 8].

Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 W.L.R. 273 (H.L.), refd to. [para. 95, footnote 9].

Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., [1985] 1 W.W.R. 112 (B.C.S.C.), consd. [para. 103, footnote 11].

Feist Publications Inc. v. Rural Telephone Service Co. (1991), 499 U.S. 340, consd. [para. 108, footnote 12].

Hager v. ECW Press Ltd. et al. (1998), 158 F.T.R. 44 (T.D.), refd to. [para. 108, footnote 13].

Millionis v. Petropoulos (1988), 23 C.P.R.(3d) 52 (Ont. H.C.), refd to. [para. 112, footnote 14].

U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 97 F.T.R. 254; 62 C.P.R.(3d) 257 (T.D.), consd. [para. 122, footnote 16].

Mentmore Manufacturing Co. and Rotary­pen Corp. v. National Merchandise Man­ufacturing Co. et al. (1978), 22 N.R. 161; 40 C.P.R.(2d) 164 (F.C.A.), refd to. [para. 143, footnote 20].

Painblanc v. Kastner et al. (1994), 182 N.R. 156; 58 C.P.R.(3d) 502 (F.C.A.), refd to. [para. 147, footnote 21].

Lishman (Paula) Ltd. v. Erom Roche Inc. et al. (1997), 72 C.P.R.(3d) 214 (F.C.T.D.), refd to. [para. 147, footnote 21].

Norac Systems International Inc. v. Prairie Systems and Equipment Ltd. (1997), 72 C.P.R.(3d) 303 (F.C.T.D.), refd to. [para. 147, footnote 21].

Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. et al., [1987] 3 F.C. 544; 80 N.R. 9 (F.C.A.), refd to. [para. 151, footnote 23].

MacDonald et al. v. Vapor Canada Ltd., [1977] 2 S.C.R. 134; 7 N.R. 477; 66 D.L.R.(3d) 1, refd to. [para. 151, foot­note 24].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 7 [para. 150].

Authors and Works Noticed:

Copinger and Skone, James, on Copyright (13th Ed. 1991), pp. 168, 176, 177, 180 [para. 123, footnote 17].

Sharpe, Robert J., and Cromwell, Thomas A., Injunctions and Specific Performance (Looseleaf Ed.) (1992), §1(2), 1.20 [para. 162, footnote 25].

Counsel:

Neil Kathol, for the plaintiff;

David Goldenberg, for the defendants.

Solicitors of Record:

Poole, Laycraft, Calgary, Alberta, for the plaintiff;

Beaumont Church, Calgary, Alberta, for the defendants.

This matter was heard at Calgary, Alberta, on June 8, 10, 11, 12, 18 and 19, 1998, before Gibson, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on May 31, 1999.