Volume IV

Issue : 2: January 26, 2006

• Importation Held to Infringe Copyright Despite the Absence of Initial Infringement
• Nevada Court Rules Google Cache Feature Constitutes "Fair Use"
• Google Resists U.S. Government Motion to Compel Disclosure of Search Information
• Yahoo Loses Nazi Memorabilia Free Speech Case
• Ontario Court Finds Collaboration Necessary to Facilitate Document Production in the Electronic Age
• U.K. Plans to Host Global Online Gambling Summit
• Korea Will Not Prosecute Personal Downloaders
• Australian Online Bookie First to Get Licence
• Utah Fines B.C. Based Pornography Website
• California Court of Appeal Upholds Microsoft Class Action Settlement
• Alberta Court of Appeal Asserts that Corporations Cannot Hide Behind Privacy Laws
• U.S. Patent Office Upholds Microsofts File System Patents
• Sony Obtains $6 Million in Statutory Damages for Mod Chip Sales

Home > Volume IV > Issue 2: January 26, 2006 > Importation Held to Infringe Copyright Despite the Absence of Initial Infringement

Importation Held to Infringe Copyright Despite the Absence of Initial Infringement

In a recent Canadian case, Euro Excellence Inc. c. Kraft Canada Inc., the Federal Court of Appeal held that the importation by a former distributor of genuine products bearing logos protected by copyright law, violated s. 27(2) of the Copyright Act (the “Act”).

Copyright in the Toblerone and Cote d’Or design logos were registered in Canada by the respective European Kraft companies, which in turn granted the plaintiff an exclusive licence to produce, reproduce or adapt the works in Canada.  Nevertheless, the defendant company, a one time Canadian distributor of Toblerone and Cote d’Or chocolate bars, continued to import and distribute the chocolate bars when the distribution agreement came to an end.  The plaintiff’s argument, which the court was receptive to, was that the bars bore logos protected by copyright law and that the defendant’s importation and sale of bars bearing these logos violated s. 27(2) of the Act.

The Court concluded that the reproductions of the labels in Europe were not themselves infringing, as they were likely done by a license-holder.  However, the court reasoned that initial infringement was not a pre-requisite for the finding that importation of the product constituted an infringement of the copyright pursuant to s. 27(2) (e) of the Act, which by definition is an infringement of copyright wherein a person who knows, or should have known, that a copy infringes copyright if it had been made in Canada by the person who made it, imports into Canada for the purposes set out in the Act including, “distributing either for the purpose of trade or to such extent as to affect the owner of the copyright”.  Accordingly, since the reproduction of the labels on the chocolate bars would have infringed copyright in Canada if it had been done in Canada by anyone other than the licensee, then the importation of chocolates bearing the copyrighted labels by the defendant violated s. 27(2)(e) of the Act.

For a copy of the case (in French), visit:

http://decisions.fca-caf.gc.ca/caf/2005/2005caf427.shtml

For additional information, visit:

http://www.it-can.ca/blog/?p=20