Date: 20000606
Docket: T-1634-99
BETWEEN:
SULLIVAN ENTERTAINMENT INC.
Plaintiff
-and-
ANNE OF GREEN GABLES LICENSING
AUTHORITY INC., DAVID MACDONALD
and RUTH MACDONALD
Defendants
REASONS FOR ORDER AND ORDER
GILES ASP.
[1] By the motion before me, the Defendants seek to strike paragraphs of the Statement of Claim arguing that this Court has no jurisdiction to entertain proceedings for the relief sought in the paragraphs which the Defendants seek to strike. These paragraphs can be considered in two separate categories. The first category relates to section 9 of the Trade-marks Act. The second category deals with alleged enforceable rights in respect of the name, personality, character or image of fictional characters depicted in literary works. The parties also sought an Order with respect to a timetable for the Case Management of these proceedings. At the conclusion hearing I reserved my decision.
[2] Dealing first with the section 9 matters. Counsel argued that this Court has only that jurisdiction which is given to it by statute and that no statute gives this Court jurisdiction for declarations concerning section 9 matters.
[3] In the past, the Court of Chivalry had jurisdiction in matters of dignity (the subject matter of section 9 is dignities) it appears that section 55 may have clothed the Federal Court with the jurisdiction of a court of chivalry at least in so far as actions to enforce rights under section 9(1)(n)(iii) are concerned [I note parenthetically that while the statute 1819, 59 Geo.3, c.46, which abolished trial by battle, may not apply in either PEI or Ontario should the Court have jurisdiction in chivalry the Federal Court Rules 1998 would probably apply to procedure].
[4] Section 55, it was not disputed gives the Court jurisdiction to enforce rights existing under section 9. If the Court can enforce rights, the Court must also be able to refuse to enforce alleged rights, which it considers the party does not have. Pickford J. in Guarantee Trust Company of New York v. Hannay & Company [1915] 2KB 536(C.A.) at 565 indicated that the English Rule similar to Rule 64 of the Federal Court Rules 1998 did not increase the jurisdiction of the Court where the subject matter was within the jurisdiction of the Court.
[5] That is to say where the Court has jurisdiction with respect to a subject matter it can give Declaratory Relief with respect to that same subject matter. This Court has jurisdiction in the matter of relief seeking to enforce section 9 and therefore, may have jurisdiction to make a Declaratory Judgment in that regard. Like the majority in Guarantee Trust I am not prepared to strike the claim for a declaration.
[6] The part of the motion dealing with fictional characters is found in 1(a)(x), (xi) and 39 & 40 of the Statement of Claim.
| (a) seeks a declaration that: |
| (x) there are no enforceable rights in Canada which would prevent the commercial exploitation of the name, personality, character, or image of fictional characters described in a Montgomery literary work separate and apart from any copyright that may subsist in that literary work; |
| (xi) in the event there are enforceable rights in Canada in respect of the name, personality, character or image of fictional characters described in a Montgomery literary work separate and apart from copyright, such rights: |
| (i) do not extend beyond the term of copyright in such a work; and |
| (ii) cannot devolve to the legal representatives of Montgomery as part of the estate of Montgomery as provided for in Sections 14(1) or 60 of the Copyright Act, R.S.C. 1985, c.C-42, as amended (the Copyright Act (Canada)). Paragraphs 39 and 40 of the Statement of Claim are the allegations upon which the relief just mentioned is founded. |
[7] Counsel for the Defendants argues that in seeking a declaration that there are no enforceable rights in Canada, the Plaintiff is asking this Court to exceed its jurisdiction. The rights mentioned are not limited to intellectual property and therefore, could be rights in areas where this Court has no jurisdiction. While it would be within the jurisdiction of this Court to declare that: "there are no rights to any fictional characters under any law within the jurisdiction of this Court except....". This Court has not jurisdiction to make declarations concerning rights in matters not within its jurisdiction. I will therefore be prepared to strike out (a)(x) and (xi)(i).
[8] (xi)(ii) however, deals with devolution of rights created pursuant to the Copyright Act. This Court has jurisdiction in the area of copyright including moral rights, an invention of the Copyright Act, and may make declarations with respect to the devolution provided for in that Act.
ORDER
[9] Paragraphs 1(a)(x), (xi)(i), 39 and 40(a) are struck out with leave to file an amended claim within 30 days in which no relief is claimed beyond the jurisdiction of this Court. Counsel for both parties shall within 30 days file with the Court preferably jointly but if necessary, separately, suggestions as to the timetable to be imposed for case management after final disposition of this motion.
"Peter A.K. Giles"
A.S.P.
Toronto, Ontario
June 6, 2000
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| COURT NO: T-1634-99 |
| STYLE OF CAUSE: SULLIVAN ENTERTAINMENT INC. |
-and-
ANNE OF GREEN GABLES LICENSING
AUTHORITY INC.,
DAVID MACDONALD
and RUTH MACDONALD
CONSIDERED AT TORONTO, ONTARIO PURSUANT TO RULE 369
REASONS FOR ORDER
| AND ORDER BY: GILES A.S.P. |
| DATED: MONDAY, JUNE 6, 2000 |
WRITTEN SUBMISSIONS BY: Mr. Randy A. Pepper
Mr. W. Lee Webster
For the Plaintiff
Mr. Roger T. Hughes, Q.C.
Ms. Elizabeth Valentina
For the Defendants
| SOLICITORS OF RECORD: OSLER, HOSKIN & HARCOURT |
Barristers & Solicitors
1 First Canadian Place, 61st Floor
Toronto, Ontario
M5X 1B8
For the Plaintiff
SIM, HUGHES, ASHTON & McKAY
Barristers and Solicitors
330 University Avenue, 6th Floor
Toronto, Ontario
M5G 1R7
For the Defendants
FEDERAL COURT OF CANADA
Date: 20000606
Docket: T-1634-99
Between:
SULLIVAN ENTERTAINMENT INC.
Plaintiff
-and-
ANNE OF GREEN GABLES
LICENSING AUTHORITY INC.,
DAVID MACDONALD
and RUTH MACDONALD
| Defendants |
| REASONS FOR ORDER |
AND ORDER