More on Euro-Excellence v. Kraft
Last Friday, the CounterfeitBlog reported on the Canadian Supreme Court's recent gray market decision in Euro-Excellence v. Kraft. The basis for the majority decision was that (i) Kraft Canada did not own the copyrights in the label designs, but only held an exclusive license; (ii) the owners of the copyrights were Kraft Canada's licensors (and parent companies); (iii) the copyright owners had manufactured and distributed the European chocolate that Kraft Canada was trying to keep out of Canada as infringing gray goods; (iv) the European chocolate label could not be deemed infringing because, under Canadian licensing law, an exclusive licensee has no right to prevent its licensor from using the licensed copyrights in Canada; and (v) Kraft Canada, therefore, could not rely on Section 27(2) of the Canadian Copyright Act to prevent the importation of the European chocolates because it applies only to imported works that would have infringed a copyright if they had been made in Canada by the persons who made them.
It should be emphasized that the outcome of this case would have been different if Kraft Canada had owned the Canadian copyrights in the label designs; i.e., if Kraft Canada's European parents had assigned their copyrights to it, rather than giving it an exclusive license. This distinction may offer a "fix" for companies in the position of Kraft Canada that would like to rely on copyright as a basis for keeping gray market versions of their products out of Canada.
| Comments (0)Major Parallel Market Ruling by Canadian Supreme Court
My partner Jorge Espinosa has launched The Gray Blog dedicated to news, law and trends involving the parallel market. Jorge reported yesterday on the Supreme Court of Canada's decision in Euro-Excellence Inc. v. Kraft Canada Inc. in which the court held that Kraft Canada could not rely on copyright law to prevent the importation of parallel market Toblerone chocolate from Europe.
KCI is the exclusive Canadian distributor of Côte d’Or and Toblerone chocolate bars in Canada for its parent companies KFB and KFS. Euro-Excellence imported and distributed Côte d’Or and Toblerone bars which it had acquired in Europe. In 2002, in order to allow KCI to challenge Euro-Excellence's importations, KFB registered three Côte d’Or logos in Canada as copyrighted artistic works and granted KCI an exclusive license in the works as used in association with confectionery products. KFS did the same with two Toblerone logos. KCI then demanded that Euro-Excellence cease distribution of any product to which the copyrighted works were affixed. When it refused, KCI sued Euro-Excellence alleging that it had engaged in secondary infringement under Section 27(2) of the Canadian Copyright Act by importing copies of KFS and KFB’s copyrighted works into Canada for sale or distribution. Section 27(2) prohibits the importation into Canada of any copy of a work "that would have infringed copyright had it been made in Canada by the person who made it." The Canadian Supreme Court held that Kraft Canada could not rely on this statute to enjoin Euro-Excellence from importing gray market chocolate into Canada because the infringing designs were placed on the imported chocolates by KCI's parent companies, the very same entities that own the copyrights in the logo designs. An exclusive copyright licensee is not entitled to sue its licensor for infringement under Canadian law (and this is contrary to the law in the U.S., by the way). For this reason, the imported chocolate packaging would not have "infringed copyright had it been made in Canada by the person who made it" and Section 27(2) was, therefore, not violated.
Read more about this decision on The Patry Copyright Blog and Jorge's The Gray Blog.
Canadian Piracy Legislation
Bill C-59, the legislative proposal designed to combat illegal camcording of films in Canada, would create two new offenses: the recording of a movie in a movie theatre without the consent of the theater's manager, and the recording of a movie in a movie theater without the consent of the theater's manager for the purpose of selling, renting, or other commercial distribution of a copy of the recording. A first offense could result in a sentence of up to two years in jail. A repeat offender could get a five year sentence. Click here for a CBC report on the bill.
| Comments (0)US Ambassador Urges Canada to strengthen copyright laws to stem piracy
At a luncheon in Ottawa today, US Ambassador David Wilkins said Canada must strengthen its copyright laws to curb pirating of American music and films. As reported by Yahoo News, Wilkins told the luncheon that the U.S. is "asking the government of Canada to strengthen your copyright laws," adding that current Canadian copyright laws are "the weakest of the G7 countries."
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