The Indigo Kills Kids Site Blocking Injunction Case – Update

 

vs.

The interim (temporary short duration) wide ranging site blocking injunction obtained by Indigo Books from Justice Fuhrer of the Federal Court has now been extended to two years following an unopposed hearing on October 22, 2024. This proceeding has been unopposed by any actual defendant and the ISPs have appeared and taken no position. (Nice work if you can get it 😉)  Bell did not even bother to appear.

I recently blogged about the interim injunction decision dated September 17, 2024, which has been reported. For whatever reason, the interlocutory decision dated October 23, 2024 which was rendered right after the one sided follow up hearing, has not been reported.  But here at the two unreported substantive decisions and orders from October 23, 2024, which I have obtained from the Court:

·       ·  Order and Reasons

·  Order

The reasons for the interlocutory decision are based on what appears, with respect, to be a problematic conflation of trademark law with copyright law, and some very dubious precedent. Where a dispute is really about a trademark, copyright law should not be contorted and muddled with trademark law in order to bring about a result that trademark law should not provide.

So sayeth the Supreme Court of Canada in the landmark decision Euro-Excellence Inc. v. Kraft Canada Inc., 2007 SCC 37 (CanLII), [2007] 3 SCR 20, <https://canlii.ca/t/1s72h>. See para. 65 and note how Kraft unsuccessfully used a “copyright action as an “interesting strategy in an effort to thwart Euro-Excellence’s distribution of” the chocolate bars” in order to get around the inevitable failure of trademarks law to address the issue. Kraft tried but utterly failed to rely on copyright in the small “bear” logo that adorns Toblerone chocolate bars. I recall Justice Binnie at the hearing asking whether anyone would buy a Toblerone chocolate bar in order to frame the wrapper and throw away the chocolate, or words to that effect. I made the prevailing arguments in this case at the SCC on behalf of the Retail Council of Canada.

Now, Indigo Books is using the artifice of apparently minimal copyright entitlement in a logo to bring about a result that would not be available under trademarks law. But nobody was there to argue to the contrary.

While there may be little or no credible sympathy for the absent defendants in this case, their absence means that potentially very important legal arguments were not addressed.  For example, the Plaintiff successfully invoked the wrongly decided (IMHO) United Airlines, Inc. v. Cooperstock, 2017 FC 616 (CanLII), [2018] 1 FCR 188, <https://canlii.ca/t/h4jzk> decision. That was a case in which Dr. Cooperstock was self-represented at trial and which likely would have been successfully appealed. However the appeal, which was in the hands of a major law firm, was suddenly discontinued just four days before the hearing under circumstances that I have refrained from mentioning.

Maybe it’s just as well that the interlocutory Indigo Kids  decision is not formally reported. Given that it was unopposed, and that the reasons are respectfully, IMHO, flawed, it is not, with respect, a helpful or persuasive addition to Canadian IP jurisprudence.

Curiously, there’s also a letter request from Indigo’s very experienced lawyer to block from the record the telephone numbers of the counsel involved. This is very unusual. Anybody can google a lawyer’s phone number and work address in a second or two – so what’s the point?

HPK