Ital-Press Ltd. v. Sicoli
T-2908-94
Gibson J.
31/5/99
103 pp.
Action for copyright infringement of "L'unica Guida Telefonica Italiana per L'Ovest Canada" (Guida) in Alberta consisting of telephone listings and block advertisements-Issues: (1) whether copyright in 1993 and 1995 Guidas; if so, who owns it; if plaintiff owner, whether copying such as to constitute infringement of copyright-(2) Whether jurisdiction in Court to entertain claim for passing off pursuant to Trade-marks Act or at common law; if so, whether passing off established-(3) Possible remedies: permanent injunction, damages and/or profits, delivery up, punitive damages-(1) Copyright Act, s. 5(1) providing under certain circumstances, copyright subsisting in every original literary, dramatic, musical and artistic work-Guidas herein literary works consisting of compilations of literary works, artistic works and data-White-page listings, central feature of Guidas, subcompilation being work resulting from selection or arrangement of data-Listings literary works within broader literary works that constitute Guidas-Block advertisements compilations of artistic works constituting literary works within broader literary works that constitute Guidas-TeleDirect (Publications) Inc. v. American Business Information Inc., [1998] 2 F.C. 22 (C.A.) applied-Guidas sufficiently original in relation to directories published for relevant regions to support copyright in Guidas-Guidas not "gardenvariety" white pages directory devoid of even slightest trace of creativity-Process involved skill, judgment, labour-Sufficient skill and judgment involved to provide originality in resulting literary work-Case herein similar to Milionis v. Petropoulos (1988), 23 C.P.R. (3d) 52 (Ont. H.C.) (directory for Greek community in Metropolitan Toronto area and elsewhere)-Block advertisements, taken as whole, do not constitute subcompilation within Guidas-Still issue of whether or not copyright subsisting in any or all of block advertisements individually-Elements in each block advertisement arranged in original way-Furthermore, contract between plaintiff and advertisers giving unequivocal notice to advertisers individually of plaintiff's claim to ownership and control of block advertisement in question-Contracts clear evidence on behalf of plaintiff on basis of which can reasonably assert copyright in block advertisements-Evidence did not establish plaintiff not entitled to use materials constituting block advertisements, with one notable exception-Ownership of copyright in Guidas, telephone listings and block advertisements with plaintiff-Defendants' directories substantially similar to plaintiff's-Defendants had access to Guidas having regard to factors enumerated in U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.)-Defendants copied substantial part of Guidas to produce their directories-Given closed market to which Guidas and directories addressed, defendants' use of directories adversely affected plaintiff's activities and diminished value of plaintiff's copyright-Defendants intentionally appropriated plaintiff's work to save time and effort-Material taken used in same or very substantially similar fashion to plaintiff's use of same material-Evidence showing that, in spite of undertaking given to Court not to do so, defendants copied or substantially copied listings from 1995 Guida to produce listings comprised in 1995/96 directory-Block advertisements appearing in directories clearly recognizable as copies or substantially copies of equivalent advertisements in Guidas-Defendants wrongly appropriated to themselves what plaintiff by its work, skill and judgment made its own property-Defendants, or some of them infringed copyright of plaintiff in some block advertisements in publishing advertisements in 1994 and 1995/96 directories that appear in 1993 and 1995 Guidas-No infringement in circumstances where plaintiff's right to use materials in doubt-Individual defendant, as directing mind behind enterprises of corporate defendants throughout relevant period, personally liable for infringement, together with corporate defendants-(2) Passing off-Plaintiff's claim with respect to passing off cannot succeed either on ground Court lacking jurisdiction or on ground any basis of jurisdiction in Court has not been pleaded and has not been established by evidence-(3) Remedies-Permanent injunction prohibiting individual and corporate defendants and other persons acting on their behalf from producing or making available any work infringing on copyright of plaintiff in Guida; prohibiting defendants from providing or offering advice or information directly or indirectly encouraging, aiding or abetting any person in Canada in producing or making available any work infringing on said copyright-As no evidence adduced with respect to damages and reliefs, and no argument advanced, further hearing required-Supplementary judgment may follow-Copyright Act, R.S.C., 1985, c. C-42, s. 5(1) (as am. by S.C. 1993, c. 15, s. 2; c. 44, s. 57; 1994, c. 47, s. 57).