Target Event Production Ltd. v. Cheung et al., 2010 FC 27

JudgeSimpson, J.
CourtFederal Court (Canada)
Case DateJanuary 11, 2010
JurisdictionCanada (Federal)
Citations2010 FC 27;(2010), 360 F.T.R. 54 (FC)

Target Event Production Ltd. v. Cheung (2010), 360 F.T.R. 54 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. JA.026

Target Event Production Ltd. (plaintiff) v. Paul Cheung and Lions Communications Inc. (defendants)

(T-702-08; 2010 FC 27)

Indexed As: Target Event Production Ltd. v. Cheung et al.

Federal Court

Simpson, J.

January 11, 2010.

Summary:

The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007. When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent. The plaintiff did not find a new location and did not operate a market in 2008 and 2009. The defendants took advantage of the business opportunity vacated by the plaintiff. They leased the property and opened a night market (Lions' market). The plaintiff brought an action, alleging copyright infringement and passing off under s. 7(b) of the Trade-marks Act in connection with the defendants' operation of the Lions' market.

The Federal Court held that there had been copyright infringement and passing off in connection with the defendants' operation of the Lions' market. The court awarded damages of $15,000, issued a declaration and ordered injunctive relief.

Copyright - Topic 3

General - Copyright Act - Interpretation - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging copyright infringement - The plaintiff's copyright claims related to: the vendor contracts, the market rules and the market site plan - The plaintiff relied on s. 27(2)(b) of the Copyright Act, which provided that "It is an infringement of copyright for any person to ... (b) distribute to such an extent as to affect prejudicially the owner of the copyright, ... a copy of a work, sound recording or fixation of a performer's performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it" - The Federal Court held that s. 27(2)(b) did not apply - There was no prejudice to the plaintiff where the plaintiff did not operate, and could not have operated, a market in 2008 and 2009 - See paragraphs 88 to 90.

Copyright - Topic 3

General - Copyright Act - Interpretation - [See Copyright - Topic 1923 and Copyright - Topic 4581 ].

Copyright - Topic 1923

Ownership - Registration - Effect of - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging copyright infringement - The plaintiff's copyright claims related to: the vendor contracts, the market rules and the market site plan - The plaintiff relied on presumptions in ss. 34.1 and 53(2) of the Copyright Act which flowed from the registrations of copyright by the plaintiff - The Federal Court acknowledged the presumptions but assigned diminished weight to them - By the date of the registrations, copyright in the paper version of the market site plan and the market rules had already been infringed - The litigation had commenced on May 2, 2008, and the registrations were made primarily for strategic purposes - See paragraphs 91 to 93.

Copyright - Topic 4405

Infringement of copyright - General principles - Substantial similarity or substantial copying - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging copyright infringement - The plaintiff's copyright claims related to, inter alia, the vendor contracts - The personal defendant, Cheung, designed the contract portion of Lions' market vendor application forms in February 2008 - He created lines and boxes to emphasize different aspects of the material - With regard to the content, he considered many samples including the plaintiff's vendor application forms which he downloaded from the plaintiff's website - He also looked at forms from festivals in the United States, forms used at the Chinatown Night Market in Vancouver and forms Au had used at his previous events - He combined the best features of all the documents to ensure that he would have all the information he needed once the contracts were completed - The Federal Court held that there was no substantial reproduction of the plaintiff's contracts, and no copyright infringement - The plaintiff's contract was written in Chinese and English - However, the defendant's contract was written only in English - The paper used for the plaintiff's contract displayed a watermark of its Logo - However, the defendants' form did not include a watermark - Finally, the format was significantly different: lines and boxes organized and delineated material on the Lions' market contract - This segregation did not appear on the plaintiff's contract - See paragraphs 102 and 103.

Copyright - Topic 4405

Infringement of copyright - General principles - Substantial similarity or substantial copying - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging copyright infringement - The plaintiff's copyright claims related to, inter alia, the market rules - The Federal Court found that for two days in March 2008, the defendants used the plaintiff's market rules (with the defendants' name inserted) - It attached them to the defendants' contract to sign up the first 40 vendors - This conduct constituted infringement of the plaintiff's copyright - Shortly after the first 40 vendors signed their contracts, revised rules became available - They were a substantial reproduction of the plaintiff's rules in that approximately 75% of the text was copied from the plaintiff's rules - However, there was no material infringement of the plaintiff's copyright because the revised rules were not used by the defendants to sign up any additional vendors - Later in March 2008, the revised rules were amended and expanded to create the final rules - The final rules were no longer a substantial reproduction of the plaintiff's rules - Since they were used when the defendants signed up the balance of its vendors for Lions' market, there was no further infringement of the plaintiff's copyright - See paragraphs 104 to 108.

Copyright - Topic 4405

Infringement of copyright - General principles - Substantial similarity or substantial copying - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging copyright infringement - The plaintiff's copyright claims related to, inter alia, the market site plan - The Federal Court held that the personal defendant, Cheung, infringed the plaintiff's copyright when he downloaded the market site plan from the plaintiff's website and prepared it for the defendants' use - Further infringement occurred when it was provided to Richmond as part of the temporary use permit application and used to help vendors select booths - The first 40 vendors saw an exact copy of the plaintiff's market site plan (with only the title changed) and another 60 to 80 were shown the defendants' market site plan which was a substantial reproduction of the plaintiff's market site plan - The defendants' market site plan was used to construct the Lions' market and this three dimensional reproduction was also an infringing activity - See paragraphs 109 to 112.

Copyright - Topic 4481

Infringement of copyright - Acts constituting an infringement - General - [See second and third Copyright - Topic 4405 ].

Copyright - Topic 4541

Infringement of copyright - Acts not constituting an infringement - General - [See first and second Copyright - Topic 4405 ].

Copyright - Topic 4581

Infringement of copyright - Remedies - General - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging copyright infringement - The plaintiff's copyright claims related to: the vendor contracts, the market rules and the market site plan - The defendants relied on s. 39(1) of the Copyright Act to limit the plaintiff's remedy to injunctive relief - The Federal Court held that the defendants could not rely on s. 39(1) because the personal defendant, Cheung, was aware that copyright had been asserted in the market site plan - He admitted that he had seen a copyright symbol on a plan for the entire property and that it included the market site plan - With respect to the vendor contracts, Cheung had reasonable grounds for suspecting that copyright subsisted - He was familiar with copyright protection through his work and a company he controlled had launched an action for copyright infringement - See paragraphs 97 to 100.

Copyright - Topic 4583

Infringement of copyright - Remedies - Injunctive relief - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging copyright infringement and passing off under s. 7(b) of the Trade-marks Act in connection with the defendants' operation of the Lions' market - The Federal Court held that there had been copyright infringement and passing off in connection with the defendants' operation of the Lions' market - The court awarded damages of $15,000, issued a declaration and ordered injunctive relief - The defendants' illegal actions had not harmed the plaintiff in a monetary sense - Nevertheless, the plaintiff was entitled to a remedy - The defendants appropriated the plaintiff's names, rules and its market site plan and misrepresented to prospective visitors that its market was the plaintiff's successful market - These steps were taken in the expectation that the Lions' market would become profitable - The fact that it was not profitable in its first year should not be a bar to the plaintiff's recovery - However, the lack of actual damages did constrain the award - See paragraphs 235 to 241.

Copyright - Topic 4586

Infringement of copyright - Remedies - Damages - [See Copyright - Topic 4583 ].

Damage Awards - Topic 705

Torts - Injury to economic or business relations - Passing off - [See Copyright - Topic 4583 ].

Damage Awards - Topic 2423

Intellectual property - Copyright infringement - [See Copyright - Topic 4583 ].

Trademarks, Names and Designs - Topic 5

Trademarks - General - Trademarks - What constitutes - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging passing off under s. 7(b) of the Trade-marks Act - The Federal Court concluded that "the plaintiff used [the plaintiff]'s Names [Richmond Night Market and Chinese characters meaning Richmond Night Market] extensively in connection with its night market. Although [the plaintiff]'s Names were originally merely descriptive, I find that, by January 2007, they were valid trademarks because they enjoyed substantial good will and had acquired distinctiveness in association with (i) the night market on the [ ... ] Property, (ii) [the plaintiff] and (iii) [the plaintiff's president]. However, this acquired distinctiveness was not, in my view, durable. Once [the plaintiff's president] and [the plaintiff] failed to open a night market in 2009, it is my view that [the plaintiff]'s Names, which were inherently weak, lost their distinctiveness and the associated goodwill. It is for this reason that much of the declaratory and injunctive relief sought by the Plaintiff has not been granted." - See paragraphs 120 to 160.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging passing off under s. 7(b) of the Trade-marks Act - The Federal Court held that there were three significant surrounding circumstances which virtually eliminated the likelihood that vendors would be confused - The first was the conduct of the plaintiff's president - The second was the intense media coverage of the closing of the Richmond Night Market and the opening of the Lions' market - The third was the content of the defendants' website - For the purposes of s. 7(b), the defendants commenced directing attention to its market with a Chinese radio advertising campaign in mid-March 2008 - At that time, the first 40 vendors signed booth rental agreements which included the plaintiff's rules (with the defendants' name inserted) and they chose their booths using the plaintiff's market site plan (with the defendants' name inserted) - None of the first 40 vendors thought at any time that they were dealing with the plaintiff or its president even though they eventually chose a booth from a plan that resembled the plaintiff's market site plan and were given rules which resembled the plaintiff's rules - On a balance of probabilities, the vendors generally would not have been confused by the defendants' conduct - None of the vendors who signed contracts for the Lions' market had ever been confused about the identity of the market's organizer because they had all been contacted, directly or indirectly, by an agent for the defendants - See paragraphs 163 to 201.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging passing off under s. 7(b) of the Trade-marks Act - The Federal Court held that there were three significant surrounding circumstances which virtually eliminated the likelihood that vendors would be confused - The first was the conduct of the plaintiff's president - The second was the intense media coverage of the closing of the Richmond Night Market and the opening of defendants' market - However, the court found that "[the plaintiff] had used the name Richmond Summer Night Market in Chinese characters on its widely used Logo and in other promotional material since 2002. In these circumstances, [ ... ] Au's [the defendants' advisor] choice of Richmond Summer Night Market and Summer Night Market in Chinese characters for [the defendants'] event in Richmond was, in my view, calculated to convey and likely did convey to Asian visitors that [the defendants'] event was [the plaintiff's] successful night market. As well, there would have been confusion for non-Asian visitors due to the similarity between Richmond Night Market and Richmond Summer Night Market. Any visitor, who had previously visited Target's Richmond Night Market, would have been misled by the fact that [the defendants] posted a picture of [the plaintiff's] 2007 market on the homepage of [the defendants'] website. This misrepresented [the Lions'] Market as [the plaintiff's] event. Prospective visitors would also have been confused by the fact that the pages on [the defendants'] website bore a title which co-mingled [the defendants'] and [the plaintiff's] names. The title read Summer Night Market - Richmond Night Market" - Based on the evidence, particularly as it related to the names, in spite of the surrounding circumstances identified by the court, prospective visitors would likely have thought that the Lions' market was a continuation of the plaintiff's successful Richmond Night Market and would have attended the market for that reason - See paragraphs 202 to 210.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging passing off under s. 7(b) of the Trade-marks Act - The plaintiff alleged that the defendants copied the collateral documents, including the personal indemnity agreement, rules and regulations, vendor parking information, penalties and fines chart and night market 2008 recycling and garbage information, and used them to pass themselves off as the plaintiff - The Federal Court found that any vendors who obtained these documents in the course of renting a booth would have known that they were dealing with the defendants - Accordingly, there was no passing off - See paragraphs 211 to 218.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The plaintiff ran a night market (Richmond Night Market) at various locations in Richmond, B.C., from 2000 to 2007 - When the lease on the location used from 2004 to 2007 (the property) expired in 2007, the plaintiff decided not to renew it because of the increased rent - The plaintiff did not find a new location and did not operate a market in 2008 and 2009 - The defendants took advantage of the business opportunity vacated by the plaintiff - They leased the property and opened a night market (Lions' market) - The plaintiff brought an action, alleging passing off under s. 7(b) of the Trade-marks Act - The plaintiff complained that the readers of the defendants' website would be misled by the defendants' reference to articles about the plaintiff's Richmond Night Market under the heading "Summer Night Market News" - The Federal Court rejected the assertion - No confusion would arise between the two markets - A reader who read only the list of headlines would know that, in 2008, a new operator was running the night market in Richmond - Further, a review of the content of the articles would make the situation even clearer - See paragraphs 219 to 226.

Cases Noticed:

Delrina Corp. v. Triolet Systems Inc. et al. (2002), 156 O.A.C. 166; 58 O.R.(3d) 309 (C.A.), dist. [para. 86].

Kirkbi AG et al. v. Ritvik Holdings Inc. et al., [2005] 3 S.C.R. 302; 341 N.R. 234; 2005 SCC 65, refd to. [para. 189].

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321, consd. [para. 189].

Ray Plastics Ltd. et al. v. Dustbane Products Ltd. (1994), 74 O.A.C. 131; 57 C.P.R.(3d) 474 (C.A.), refd to. [para. 190].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 2006 SCC 22, refd to. [para. 197].

Mentmore Manufacturing Co. and Rotary Pen Corp. v. National Merchandise Manufacturing Co. (1978), 22 N.R. 161; 89 D.L.R.(3d) 195 (F.C.A.), refd to. [para. 232].

Statutes Noticed:

Copyright Act, R.S.C. 1985, c. C-42, sect. 27(2)(b) [para. 88]; sect. 34.1 [para. 92]; sect. 53(2) [para. 91].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 7(b) [para. 161].

Counsel:

Paul Smith and Lawrence Chan, for the plaintiff;

Katherine E. Ducey, for the defendants.

Solicitors of Record:

Smiths IP, Vancouver, British Columbia, for the plaintiff;

Campbell Froh May & Rice LLP, Vancouver, British Columbia, for the defendants.

This action was heard on May 12-15 and 19-21 and June 10 and 11, 2009, at Vancouver, British Columbia, by Simpson, J., of the Federal Court who delivered the following judgment at Ottawa, Ontario, on January 11, 2010.

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2 practice notes
  • Target Event Production Ltd. v. Cheung et al., (2010) 409 N.R. 118 (FCA)
    • Canada
    • Canada (Federal) Federal Court of Appeal (Canada)
    • 16 September 2010
    ...of the Trade-marks Act in connection with the defendants' operation of the Lions' market. The Federal Court, in a decision reported at 360 F.T.R. 54, held that there had been copyright infringement and passing off in connection with the defendants' operation of the Lions' market. The cour......
  • Target Event Production Ltd. v. Cheung et al., (2010) 403 N.R. 331 (FCA)
    • Canada
    • Canada (Federal) Federal Court of Appeal (Canada)
    • 4 June 2010
    ...of the Trade-marks Act in connection with the defendants' operation of the Lions' market. The Federal Court, in a decision reported at 360 F.T.R. 54, held that there had been copyright infringement and passing off in connection with the defendants' operation of the Lions' market. The cour......
2 cases
  • Target Event Production Ltd. v. Cheung et al., (2010) 409 N.R. 118 (FCA)
    • Canada
    • Canada (Federal) Federal Court of Appeal (Canada)
    • 16 September 2010
    ...of the Trade-marks Act in connection with the defendants' operation of the Lions' market. The Federal Court, in a decision reported at 360 F.T.R. 54, held that there had been copyright infringement and passing off in connection with the defendants' operation of the Lions' market. The cour......
  • Target Event Production Ltd. v. Cheung et al., (2010) 403 N.R. 331 (FCA)
    • Canada
    • Canada (Federal) Federal Court of Appeal (Canada)
    • 4 June 2010
    ...of the Trade-marks Act in connection with the defendants' operation of the Lions' market. The Federal Court, in a decision reported at 360 F.T.R. 54, held that there had been copyright infringement and passing off in connection with the defendants' operation of the Lions' market. The cour......

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