Halifax, Nova Scotia, September 27, 2006
PRESENT: The Honourable Mr. Justice O'Keefe
BETWEEN:
FILM CITY ENTERTAINMENT LTD., and
THE MOTION PICTURE DEVELOPMENT FOUNDATION R.O.C.
and
RACHEL CHEN and SIMON CHEN doing business as
FORMOSA COQUITLAM VIDEO
GOLDEN FORMOSA ENTERTAINMENT LTD.
CHIEN-WEN CHEN
HUI MEI CHEN
HUI-CHENG CHEN
REASONS FOR ORDER AND ORDER
O’KEEFE J.
[1] Film City Entertainment Ltd. and the Motion Picture Development Foundation R.O.C. (the plaintiffs), commenced an action claiming copyright infringement by the defendants. This is a motion by the plaintiffs for summary judgment against the defendants pursuant to Federal Courts Rules, 1998, S.O.R. 198-106, Rule 216. The plaintiffs claim that the defendants have reproduced and distributed to the public a television program in which copyright is owned and licenced by the plaintiffs.
[2] The plaintiffs seek an order pursuant to Rule 216 of the Federal Courts Rules, 1998, granting summary judgment against the defendants, including:
1. A declaration that copyright subsists in Canada in the television program “The 40th Golden Horse Awards Presentation Ceremony and Walk of Fame” (the program);
2. A declaration that the Motion Picture Development Foundation R.O.C. is the owner of
the copyright in the program;
3. A declaration that Film City Entertainment Ltd. hold a licence under copyright for the program from the Motion Picture Development Foundation R.O.C. which is protected by the Copyright Act, R.S.C. 1985, c. C-42 (the Act);
4. A declaration that the defendants have infringed the plaintiffs’ rights in the program;
5. A permanent injunction restraining the defendants and their respective directors, officers, employees, servants, agents, assigns, and successors, from, directly or indirectly, infringing copyright in the program by any one or more of the following means: reproducing all or a substantial part of the program in a material form; selling or renting out, or by way of trade distributing, exposing or offering for sale or rental, or exhibiting in public, or distributing to such an extent as to prejudicially affect the plaintiffs’ rights, or possessing for the purpose of doing any of those acts described in this subparagraph, unless the plaintiff, Film City Entertainment Ltd.’s licence has been obtained and paid for;
6. The following damages jointly and severally against the defendants:
(a) statutory damages pursuant to section 38.1 of the Act in the amount of $10,000; and
(b) exemplary and aggravated damages in the amount of $7,000;
7. Pre-judgment interest calculated against the statutory damages of $10,000 from January 1, 2004, pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c. 79;
8. Post-judgment interest pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c. 79, commencing from the date of judgment;
9. An order granting the plaintiffs their costs of this action in the amount of $3,840.00 in costs plus GST, and $671.76 for disbursements.
Background
[3] The plaintiffs have commenced an action for copyright infringement against the defendants, alleging that Golden Formosa Entertainment Limited, (the corporate defendant), distributed to the general public, unauthorized counterfeit versions of a television program in which the plaintiffs own the copyright in Canada. The plaintiffs also allege that the personal defendants (Rachel Chen, Simon Chen, Chien-Wen Chen, Hui Mei Chen and Hui-Cheng Chen) while acting in their capacities as either managers or directors of the corporate defendants, knowingly authorized and ordered the infringement.
[4] The action in this matter was originally commenced by the plaintiffs in February 2004. The statement of claim was amended in December 2004 when the defendants, Rachel Chen and Simon Chen, filed a defence stating that they were employees of the corporate defendant. As a result, the plaintiffs amended their statement of claim to include the corporate defendant and its directors.
[5] The defendants filed an amended defence in which the corporate defendant claims to have acquired the rights to distribute the program in Canada from a legitimate copyright owner. The defendants therefore claimed that there was no copyright infringement.
[6] The program in question is a Chinese-language Taiwanese television awards program, entitled (in English), “The 40th Annual Golden Horse Awards” (the program).
[7] The affidavit evidence of Michael Leung shows that the plaintiff, Film City Entertainment Ltd., registered its interest in the program with the Canadian Intellectual Property Office.
[8] The affidavit of Derek Wong states that in December 2003, he rented a copy of the program in video format at 360 Johnson Street, Coquitlam, British Columbia and that he gave it to Michael Leung.
[9] The affidavit evidence of Mr. Leung establishes that the defendants, Formosa Coquitlam Video and Golden Formosa Entertainment Ltd., operated from 360 Johnson Street, Coquitlam, British Columbia.
[10] The affidavit evidence of Michael Leung states that he viewed the copy and that it was a crude and counterfeit form of the program.
[11] The affidavit evidence of Michael Leung states the following in paragraph 34 of his affidavit:
In the within action, the personal defendants all share the family name Chen. In past discussions with her, Hui Mei Chen told me that one of the other named directors of the Corporate Defendant showing on the company search was her sister and that her sister ran the business with her. To the best of my belief, for the reasons cited above and in light of the circumstances, I believe that the personal defendants are all family members who share actively in the management and operation of the Premises, including the principal activities of Golden Formosa which involves obtaining and distributing movies and television shows (including the Program) to the general public.
[12] Michael Leung also stated in his affidavit that the defendant, Hui Mei Chen, was responsible for ordering and procuring movie products distributed by her companies (including Golden Formosa), and that from 1996 until approximately 2001, she repeatedly purchased movies from Film City Entertainment Ltd. In addition, Leung stated that Hui Mei Chen held herself out to be the manager and director of these companies.
[13] Michael Leung stated in his affidavit that he telephoned the premises at 360 Johnson Street and spoke to a person who stated that he was the defendant, Simon Chen, and that he owned the premises along with his mother.
[14] Richard Lin stated in his affidavit that the program was never distributed in Canada by Taipei International Satellite TV (Canada) Inc. (Taipei TV). Taipei TV is the exclusive Canadian rightsholder of certain television programs produced and first broadcast in Taiwan by Chinese Television Systems (CTS), Taiwan Television Enterprise Ltd. (TTV) and the China Television Company (CTV). Lin stated that in the summer of 2004, he and Mandy Chen discussed the possibility of her distributing Taipei TV programs. He further stated that Taipei TV never sold, leased or authorized the use of the program to Mandy Chen nor to any other individuals or stores. Mandy Chen is also known as Hui Mei Chen.
Issue
[15] Should summary judgment be granted in this case?
Analysis and Decision
[16] In relation to summary judgment, Rules 213 to 218 of the Federal Courts Rules, 1998 apply and can be found in the attached annex.
[17] The plaintiffs also rely on sections 5 and 27 and subsections 38.1(5), 38.1(7), 39(2) and 53(2) of the Copyright Act, R.S.C. 1985, c. C-42.
[18] Madam Justice Tremblay-Lamer in Granville Shipping Co. v. Pegasus Lines Ltd. S.A. et al. (1996) 111 F.T.R. 189 (F.C.T.D.), has summarized the general principles that apply in applications for summary judgment as follows:
[8] I have considered all of the case law pertaining to summary judgment and I summarize the general principles accordingly:
1. the purpose of the provisions is to allow the court to summarily dispense with cases which ought not proceed to trial because there is no genuine issue to be tried (Old Fish Market Restaurants v. 1000357 Ontario Inc. et al.), at p. 222;
2. there is no determinative test (Feoso Oil Limited v. Saria (1995), 184 N.R. 307 (F.C.A.) but Stone, J. A., seems to have adopted the reasons of Henry, J., in Pizza Pizza Ltd. v. Gillespie (Pizza Pizza) (1990), 75 O.R. (2d) 225 (Gen. Div.). It is not whether a party cannot possibly succeed at trial, it is whether the case is so doubtful that it does not deserve consideration by the trier of fact at a future trial;
3. each case should be interpreted in reference to its own contextual framework (Blyth, supra, and Collie, supra);
4. provincial practice rules (especially rule 20 of the Ontario Rules) can aid in interpretation (Feoso, supra, and Collie, supra);
5. this court may determine questions of fact and law on the motion for summary judgment if this can be done on the material before the court (this is broader than rule 20 of the Ontario Rules of Civil Procedure) (Patrick);
6. on the whole of the evidence, summary judgment cannot be
granted if the necessary facts cannot be found or if it would be unjust to do so (Pallman, supra, and Sears, supra);
7. in the case of a serious issue with respect to credibility, the case should go to trial because the parties should be cross-examined before the trial judge (Forde, supra, and Sears, supra). The mdere existence of apparent conflict in the evidence does not preclude summary judgment; the court should take a “hard look” at the merits and decide if there are issues of credibility to be resolved (Stokes, supra).
[19] I have considered the material filed on the motion, the submissions made by counsel for the plaintiffs and the submissions made by Ms. Chen on behalf of the defendants. I am of the opinion that summary judgment should be granted in this case. The plaintiffs have established that the defendants rented a counterfeit version of the program to Mr. Wong. The plaintiffs have also shown that copyright subsists in the program in Canada and that the plaintiff, Film City Entertainment Ltd., owns the copyright in the program. The plaintiffs established that the defendants were or should have been aware of the copyright in the program and that the corporate defendant infringed the plaintiffs’ copyright. I am also satisfied that the infringement took place under the knowing direction and control of the personal defendants.
[20] I would refer to paragraphs 23-36 of the affidavit of Michael Leung and in particular paragraph 29 which states:
Hui Mei Chen has been and, to the best of my knowledge, is responsible for the ordering and procuring of movie products that her companies (including Golden Formosa) distribute. From 1996 to approximately 2001, Hui Mei Chen repeatedly purchased movies from the Active Plaintiff or its affiliates on behalf of her companies including Golden Formosa. During this time, to the best of my knowledge, Hui Mei Chen and Golden Formosa accepted our product and never questioned the validity of our rights to distribute it. In her dealings with us, she has always held herself out to be the manager and director of those companies, including Golden Formosa.
I would also note that the defendant, Simon Chen stated that he and his mother owned the premises from which the counterfeit video was sold.
[21] Based on the evidence before me on this motion, the defences filed by the defendants do not preclude the granting of summary judgment in this case.
[22] Applying the general principles outlined in Granville Shipping, I am of the opinion that summary judgment should be granted as there is no genuine issue to be tried. There is no issue as to credibility and the necessary facts are present to grant summary judgment.
[23] The plaintiffs have elected to claim statutory damages.
[24] The plaintiffs are granted summary judgment against the defendants, including:
1. A declaration that copyright subsists in Canada in the television program “The 40th Golden Horse Awards Presentation Ceremony and Walk of Fame” (the program) and that:
2. A declaration that the Motion Picture Development Foundation R.O.C. is the owner of
the copyright in the program;
3. A declaration that Film City Entertainment Ltd. holds a licence under copyright for the program from the Motion Picture Development Foundation R.O.C. which is protected by the Copyright Act, R.S.C. 1985, c. C-42;
4. A declaration that the defendants have infringed the plaintiffs’ rights in the program;
5. A permanent injunction restraining the defendants and their respective directors, officers, employees, servants, agents, assigns, and successors, from, directly or indirectly, infringing copyright in the program by any one or more of the following means: reproducing all or a substantial part of the program in a material form; selling or renting out, or by way of trade distributing, exposing or offering for sale or rental, or exhibiting in public, or distributing to such an extent as to prejudicially affect the plaintiffs’ rights, or possessing for the purpose of doing any of those acts described in this subparagraph, unless the plaintiff, Film City Entertainment Ltd.’s licence has been obtained and paid for.
[25] I am not prepared to grant statutory damages in the amount of $10,000. In assessing the amount of statutory damages to be awarded, I have considered all relevant factors including the good faith or bad faith of the defendants, the conduct of the defendants before and during the proceedings, and the need to deter other infringements of the copyright in question. In coming to my finding on the amount of statutory damages, I have considered the submissions in paragraph 50 of the plaintiffs’ memorandum of fact and law. In coming to my finding on the amount of statutory damages, I have considered the plaintiffs’ submissions found at paragraph 50 of their memorandum of fact and law. The plaintiffs submitted that the defendants’ involvement in similar proceedings, attitude toward the judicial process and high level of sophistication, are factors which should be taken into account when assessing damages. The plaintiffs also submitted that the program was obviously counterfeit in nature, time-sensitive and profited from by the defendants at the plaintiffs’ expense. Based on the facts of this case, I am prepared to award statutory damages in the amount of $5,000.
[26] I am not prepared to award exemplary and aggravated damages.
[27] With respect to costs, I will award the plaintiffs’ costs in the amount of $4,300.56. I have deducted four units as this matter was argued together with Court file T-337-04. Otherwise, I am of the view that the costs claimed were reasonable.
[28] The plaintiffs are awarded pre-judgment interest calculated against the statutory damages of $5,000 from January 1, 2004 pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c. 79.
[29] The plaintiffs are awarded post-judgment interest pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c. 79, commencing from the date of judgment.
ORDER
[30] IT IS ORDERED that the plaintiffs are granted summary judgment against the
defendants, including:
1. A declaration that copyright subsists in Canada in the television program “The 40th Golden Horse Awards Presentation Ceremony and Walk of Fame”;
2. A declaration that the Motion Picture Development Foundation R.O.C. is the owner of
the copyright in the program;
3. A declaration that Film City Entertainment Ltd. holds a licence under copyright for the program from the Motion Picture Development Foundation R.O.C. which is protected by the Copyright Act, R.S.C. 1985, c. C-42;
4. A declaration that the defendants have infringed the plaintiffs’ rights in the program;
5. A permanent injunction restraining the defendants and their respective directors, officers, employees, servants, agents, assigns, and successors, from, directly or indirectly, infringing copyright in the program by any one or more of the following means: reproducing all or a substantial part of the program in a material form; selling or renting out, or by way of trade distributing, exposing or offering for sale or rental, or exhibiting in public, or distributing to such an extent as to prejudicially affect the plaintiffs’ rights, or possessing for the purpose of doing any of those acts described in this subparagraph, unless the plaintiff, Film City Entertainment Ltd.’s licence has been obtained and paid for.
6. Statutory damages against the defendants jointly and severally in the amount of $5,000;
7. Pre-judgment interest calculated against the statutory damages of $5,000 from January 1, 2004 pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c-79;
8. Post-judgment interest pursuant to the British Columbia Court Order Interest Act, R.S.B.C. 1996, c-79, commencing from the date of judgment.
9. Costs in the amount of $4,300.56.
ANNEX
Rules 213 to 218 of the Federal Court Rules, 1998 state as follows:
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213.(1) A plaintiff may, after the defendant has filed a defence, or earlier with leave of the Court, and at any time before the time and place for trial are fixed, bring a motion for summary judgment on all or part of the claim set out in the statement of claim.
(2) A defendant may, after serving and filing a defence and at any time before the time and place for trial are fixed, bring a motion for summary judgment dismissing all or part of the claim set out in the statement of claim.
214.(1) A party may bring a motion for summary judgment in an action by serving and filing a notice of motion and motion record at least 20 days before the day set out in the notice for the hearing of the motion.
(2) A party served with a motion for summary judgment shall serve and file a respondent's motion record not later than 10 days before the day set out in the notice of motion for the hearing of the motion.
215. A response to a motion for summary judgment shall not rest merely on allegations or denials of the pleadings of the moving party, but must set out specific facts showing that there is a genuine issue for trial.
216.(1) Where on a motion for summary judgment the Court is satisfied that there is no genuine issue for trial with respect to a claim or defence, the Court shall grant summary judgment accordingly.
(2) Where on a motion for summary judgment the Court is satisfied that the only genuine issue is
(a) the amount to which the moving party is entitled, the Court may order a trial of that issue or grant summary judgment with a reference under rule 153 to determine the amount; or
(b) a question of law, the Court may determine the question and grant summary judgment accordingly.
(3) Where on a motion for summary judgment the Court decides that there is a genuine issue with respect to a claim or defence, the Court may nevertheless grant summary judgment in favour of any party, either on an issue or generally, if the Court is able on the whole of the evidence to find the facts necessary to decide the questions of fact and law.
(4) Where a motion for summary judgment is dismissed in whole or in part, the Court may order the action, or the issues in the action not disposed of by summary judgment, to proceed to trial in the usual way or order that the action be conducted as a specially managed proceeding.
217. A plaintiff who obtains summary judgment under these Rules may proceed against the same defendant for any other relief and against any other defendant for the same or any other relief.
218. Where summary judgment is refused or is granted only in part, the Court may make an order specifying which material facts are not in dispute and defining the issues to be tried, including an order
(a) for payment into court of all or part of the claim;
(b) for security for costs; or
(c) limiting the nature and scope of the examination for discovery to matters not covered by the affidavits filed on the motion for summary judgment or by any cross-examination on them and providing for their use at trial in the same manner as an examination for discovery.
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213.(1) Le demandeur peut, après le dépôt de la défense du défendeur — ou avant si la Cour l’autorise — et avant que l’heure, la date et le lieu de l’instruction soient fixés, présenter une requête pour obtenir un jugement sommaire sur tout ou partie de la réclamation contenue dans la déclaration.
(2) Le défendeur peut, après avoir signifié et déposé sa défense et avant que l’heure, la date et le lieu de l’instruction soient fixés, présenter une requête pour obtenir un jugement sommaire rejetant tout ou partie de la réclamation contenue dans la déclaration.
214.(1) Toute partie peut présenter une requête pour obtenir un jugement sommaire dans une action en signifiant et en déposant un avis de requête et un dossier de requête au moins 20 jours avant la date de l’audition de la requête indiquée dans l’avis.
(2) La partie qui reçoit signification d’une requête en jugement sommaire signifie et dépose un dossier de réponse au moins 10 jours avant la date de l’audition de la requête indiquée dans l’avis de requête.
215. La réponse à une requête en jugement sommaire ne peut être fondée uniquement sur les allégations ou les dénégations contenues dans les actes de procédure déposés par le requérant. Elle doit plutôt énoncer les faits précis démontrant l’existence d’une véritable question litigieuse. 216.(1) Lorsque, par suite d’une requête en jugement sommaire, la Cour est convaincue qu’il n’existe pas de véritable question litigieuse quant à une déclaration ou à une défense, elle rend un jugement sommaire en conséquence.
(2) Lorsque, par suite d’une requête en jugement sommaire, la Cour est convaincue que la seule véritable question litigieuse est:
a) le montant auquel le requérant a droit, elle peut ordonner l’instruction de la question ou rendre un jugement sommaire assorti d’un renvoi pour détermination du montant conformément à la règle 153;
b) un point de droit, elle peut statuer sur celui-ci et rendre un jugement sommaire en conséquence.
(3) Lorsque, par suite d’une requête en jugement sommaire, la Cour conclut qu’il existe une véritable question litigieuse à l’égard d’une déclaration ou d’une défense, elle peut néanmoins rendre un jugement sommaire en faveur d’une partie, soit sur une question particulière, soit de façon générale, si elle parvient à partir de l’ensemble de la preuve à dégager les faits nécessaires pour trancher les questions de fait et de droit.
(4) Lorsque la requête en jugement sommaire est rejetée en tout ou en partie, la Cour peut ordonner que l’action ou les questions litigieuses qui ne sont pas tranchées par le jugement sommaire soient instruites de la manière habituelle ou elle peut ordonner la tenue d’une instance à gestion spéciale.
217. Le demandeur qui obtient un jugement sommaire aux termes des présentes règles peut poursuivre le même défendeur pour une autre réparation ou poursuivre tout autre défendeur pour la même ou une autre réparation.
218. Lorsqu’un jugement sommaire est refusé ou n’est accordé qu’en partie, la Cour peut, par ordonnance, préciser les faits substantiels qui ne sont pas en litige et déterminer les questions qui doivent être instruites, ainsi que:
a) ordonner la consignation à la Cour d’une somme d’argent représentant la totalité ou une partie de la réclamation;
b) ordonner la remise d’un cautionnement pour dépens;
c) limiter la nature et l’étendue de l’interrogatoire préalable aux questions non visées par les affidavits déposés à l’appui de la requête en jugement sommaire, ou limiter la nature et l’étendue de tout contre-interrogatoire s’y rapportant, et permettre l’utilisation de ces affidavits lors de l’interrogatoire à l’instruction de la même manière qu’à l’interrogatoire préalable.
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FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-345-04
STYLE OF CAUSE: FILM CITY ENTERTAINMENT LTD. et al
- and -
GOLDEN FORMOSA ENTERTAINMENT LTD. et al
PLACE OF HEARING: Vancouver, British Columbia
DATE OF HEARING: March 27, 2006
APPEARANCES:
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Trevor Kaatz
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Hui Mei Chen
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SELF-REPRESENTED |
SOLICITORS OF RECORD:
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Boughton Law Corporation Vancouver, British Columbia
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Hui Mei Chen Burnaby, British Columbia
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