Positive Attitude Safety System Inc. et al. v. Albian Sands Energy Inc. et al., 2005 FCA 332

• Judge: Desjardins, Rothstein and Pelletier, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: October 17, 2005
• Jurisdiction: Canada (Federal)
• Citations: 2005 FCA 332;(2005), 343 N.R. 235 (FCA)

Positive Attitude Safety v. Albian Sands (2005), 343 N.R. 235 (FCA)

MLB headnote and full text

Temp. Cite: [2005] N.R. TBEd. OC.046

Albian Sands Energy Inc. and Jeff Stibbard (appellants/respondents by cross-appeal) v. Positive Attitude Safety System Inc., James S. Burns and Claire Burns (respondents/appellants by cross-appeal)

(A-407-04; 2005 FCA 332)

Indexed As: Positive Attitude Safety System Inc. et al. v. Albian Sands Energy Inc. et al.

Federal Court of Appeal

Desjardins, Rothstein and Pelletier, JJ.A.

October 17, 2005.

Summary:

The plaintiffs brought an action against the defendants for passing off respecting the plain­tiffs' unregistered Positive Attitude Safety System and PASS trademarks and copy­right infringement respecting the plain­tiffs' PASS materials (i.e., a worker driven safety system). The defendants brought a mo­tion under rule 216 for summary judg­ment dismissing the action, submitting that there was no genuine issue for trial. In re­sponse, the plaintiffs sought dismissal of the defendants' motion and summary judg­ment on the claims.

The Federal Court, in a judgment reported (2004), 258 F.T.R. 30, held that there was a genuine issue for trial respecting trademark infringement (passing off) and copyright in­fringement. The court was satisfied that copy­right infringement occurred. The trial judge would have to determine, inter alia, whether the defendants were protected by a licensing agreement. The court set out the issues to be determined at trial. The defend­ants appealed the trial judge's finding that the plaintiffs had a valid copyright in the PASS materials, submitting that the issue was not before the court. The defendants al­so claimed that the trial judge erred in find­ing a copyright infringement and a passing-off. The plaintiffs cross-appealed.

The Federal Court of Appeal allowed the appeal and granted summary judgment dis­missing the plaintiff's trademark and copy­right infringement claims. The trial judge erred in finding a copyright infringement sub­ject to the effect of a purported licence (consent). Until the issue of consent was resolved, there could be no finding of in­fringement. The court dismissed the cross-appeal.

Copyright - Topic 4642

Defences - Consent - The defendants alleg­edly copied the plaintiffs' worker driven safety system (PASS) to develop, for in­ter­nal use, their own system (ASESS) - The trial judge found copyright infringe­ment subject to a determination of whether the plaintiffs consented to such use under a purported licence - The Federal Court of Ap­peal held that copyright infringement re­quired a lack of consent by the copyright owner - The trial judge erred in finding infringement subject to the effect of the purported licence - Such a finding was il­logical - Until the issue of consent was de­ter­mined, there could be no copyright in­fringe­ment - See paragraphs 37 to 41.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Con­fusion with other marks - [See Trade­marks, Names and Designs - Topic 3068 ].

Trademarks, Names and Designs - Topic 1807

Trademarks - Infringement - Use - General - [See Trademarks, Names and Designs - Topic 3068 ].

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The plaintiffs brought an action against the defendants for passing off re­specting the plaintiffs' unregistered Posi­tive Attitude Safety System and PASS trade­marks and copyright infringement re­specting the plaintiffs' PASS materials (i.e., a worker driven safety system) - The trial judge found that any use by the de­fendants of the plaintiffs' trademark was internal - The defendants had in no way dealt with the system in a commercial way with others - The Federal Court of Appeal held that there could be a trademark in­fringement (Trade-marks Act, s. 7(b)) and passing off (s. 7(c)) only if there was "con­fusion" (s. 6(2)) and "use" (s. 4(1)) - Ab­sent a transfer of the system in the course of trade, there could be no "con­fusion", no "use" and accordingly, no trademark in­fringement or passing off - The trial judge erred in failing to grant the defen­dants summary judgment dismissing the infringe­ment and passing-off claims as presenting no genuine issue for trial - See paragraphs 29 to 35.

Statutes Noticed:

Copyright Act, R.S.C. 1985, c. C-42, sect. 27(1) [para. 39].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 4(1) [para. 31]; sect. 6(2) [para. 30]; sect. 7(b), sect. 7(c) [para. 14].

Counsel:

Michael D. Manson and Nicholas Fyfe, Q.C., for the appellant;

Bruce M. Green, for the respondent.

Solicitors of Record:

Smart & Biggar, Vancouver, B.C., for the appellant;

Oyen Wiggs Green & Mutala, Vancouver, B.C., for the respondent.

This appeal and cross-appeal were heard on April 14, 2005, at Vancouver, B.C., be­fore Desjardins, Rothstein and Pelletier, JJ.A., of the Federal Court of Appeal.

On October 17, 2005, Pelletier, J.A., de­livered the following judgment for the Court of Appeal.