Date: 20030424
Docket: T-1125-02
Citation: 2003 FCT 505
Ottawa, Ontario, the 24th day of April 2003
Present: THE HONOURABLE MR. JUSTICE SIMON NOËL
BETWEEN:
FOLIOT INC.
Applicant
and
HEARTWOOD MANUFACTURING LTD. and
MEDICINE HAT COLLEGE
Respondents
REASONS FOR ORDER AND ORDER
[1] This is an application for an interlocutory injunction by the applicant, Foliot Inc. ("Foliot") against Heartwood Manufacturing Ltd. ("Heartwood") and Medicine Hat College ("College") seeking prohibition of the production and reproduction, both as a design and as a three-dimensional form, of a captain's bed built like the bed of the applicant.
[2] In 1996, Foliot designed and manufactured a captain's bed which, instead of having a wood structure overall, had a metal support structure combined with a wood surface for decorative purposes and drawers on casters.
[3] Foliot did not register its captain's bed concept at the patent office under the Patent Act, S.C. c. P-4, nor did he protect it under the Industrial Design Act, S.C. c. I-9.
[4] In some calls for tender documents for captain's beds to furnish the student residences that were drawn up by the College in collaboration with Heartwood, we find a description of a captain's bed that refers to a metal structure. Having seen Heartwood's prototype, Foliot is of the opinion that it is a captain's bed that resembles its own captain's bed. However, Heartwood claims that its metal support structure is different because, unlike Foliot's, which is attached at all its joints, it can be dismantled for storage purposes.
[5] Foliot claims that Heartwood copied its captain's bed and that the College published it through its tender documents, and thus both acted contrary to section 34 of the Copyright Act, S.C. c. C-42 ("Act").
[6] Foliot argues that the innovation in its captain's bed lies in the assembly of the metal support structure, the wood surface for decorative purposes at the extremities and on the sides, and the drawers on casters for storing clothes.
[7] According to Foliot, this assembly is innovative and is protected by the definition of "artistic work" in section 2 of the Act.
[8] Heartwood is of the opinion that it is not a protected work under the Act because it is simply a metal structure and that even if it were a protected work, the exception under section 64.1(1) of the Act applies since the metal support has a utilitarian function.
[9] To adequately evaluate an application for an interlocutory injunction, the Court must ask itself whether the following criteria have been fulfilled:
- the existence of a serious question;
- the existence of irreparable harm; and, if necessary
- the evaluation of the balance of convenience (R.J.R. MacDonald v. Canada (Attorney General), [1994] 1 S.C.R. 311)
[10] First, I do not need to decide on the merits but only to find whether or not there is one or more serious question to be argued in order to definitively determine the issue. I answer in the affirmative since Foliot's argument that its captain's bed is an artistic work, being an assembly of three parts making up a whole, deserves to be determined on its merits. Moreover, the arguments of Heartwood and the College that it is nothing more than a mere metal support that is unprotected by the Act and that in any event section 64.1(1) creates an exception, in themselves demonstrate the seriousness of the application.
[11] Then, having determined the existence of a serious question, I must ask myself whether the case advanced by Foliot satisfactorily presents an irreparable harm, the second essential consideration for obtaining an interlocutory injunction.
[12] To do so, I have examined paragraphs 58, 59 and 62 of the affidavit of Foliot's president in support of irreparable harm. For the purposes herein, I reproduce these paragraphs:
[translation]
(58) FOLIOT's work has allowed it to develop an enviable position in Canadian and American markets and to stand out from the competition in the area of furniture for students residences;
(59) Foliot would suffer serious and significant harm if HEARTWOOD's passing-off, in breach of FOLIOT's copyright, was allowed, since the competition would thereby get the message that it is tolerated and permitted to copy its work with impunity;
(62) Were it not for the infringement of FOLIOT's work, HEARTWOOD would never have been able to offer a product meeting the characteristics described in the MHC call for tenders, so it is reasonable for FOLIOT to claim the relief referred to in this proceeding;
[13] In R.J.R. - MacDonald, supra, the Supreme Court of Canada defines irreparable harm in the following way:
"Irreparable" refers to the nature of the harm suffered rather than its magnitude. It is harm which either cannot be quantified in monetary terms or which cannot be cured, usually because one party cannot collect damages from the other. Examples of the former include instances where one party will be put out of business by the court's decision (R.L. Crain Inc. v. Hendry (1988), 48 D.L.R. (4th) 228 (Sask. Q.B.)); where one party will suffer permanent market loss or irrevocable damage to its business reputation (American Cyanamid, supra); or where a permanent loss of natural resources will be the result when a challenged activity is not enjoined (MacMillan Bloedel Ltd. v. Mullin, [1985] 3 W.W.R. 577 (B.C.C.A.)). The fact that one party may be impecunious does not automatically determine the application in favour of the other party who will not ultimately be able to collect damages, although it may be a relevant consideration (Hubbard v. Pitt, [1976] Q.B. 142 (C.A.)).
[14] The applicant's evidence of irreparable harm is in my view very limiting and does not provide the facts in support of the alleged harm. To adduce evidence of irreparable harm, there must be material facts with examples describing the situation and demonstrating the impossibility of reparation.
[15] In rebuttal, Heartwood submits in affidavit evidence that the K-D bed, which is comparable to the Foliot captain's bed, has not been offered or sold since the service of process in this case. In reality, apart from the construction of the prototype, it has not even been manufactured, it says.
[16] Moreover, regarding the College's call for tenders, for which Heartwood is said to have obtained the contract, the parties agreed that different beds would be installed in the residences.
[17] Furthermore, as the Supreme Court of Canada indicates in the definition of "irreparable" reproduced above, the harm in the present case is identifiable and quantifiable. Heartwood and the College are solvent companies and the harm, if any, is quantifiable. Accordingly, Foliot has not persuaded me that it was suffering irreparable harm.
[18] Foliot's motion therefore falls on the second factor needed for the award of an injunction. Given my conclusion concerning irreparable harm, it is not necessary to go to the third stage and assess the balance of convenience.
ORDER
THE COURT ORDERS THAT:
The application for an interlocutory injunction is dismissed with costs.
"Simon Noël"
Judge
Certified true translation
Suzanne Gauthier, C. Tr., LL.L.
FEDERAL COURT OF CANADA
TRIAL DIVISION
SOLICITORS OF RECORD
DOCKET: T-1125-02
STYLE: Foliot Inc.
v. Heartwood Manufacturing Ltd.
and Medicine Hat College
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: April 7, 2003
REASONS: The Honourable Mr. Justice Simon Noël
DATED: April 24, 2003
APPEARANCES:
Richard Dufour FOR THE APPLICANT
Annie Breault
Diane E. Cornish FOR THE RESPONDENTS
Geneviève Domey
SOLICITORS OF RECORD:
Dufour Mottet Advocates
Laval, Quebec FOR THE APPLICANT
Osler, Hoskin & Harcourt
Ottawa, Ontario FOR THE RESPONDENTS