Declaratory relief granted based on failure to establish intellectual property's enforceability
The Federal Court has determined that the copyright in certain films was unenforceable against plaintiffs in Canada because the defendants, based in Austria and Iran, failed to provide evidence to establish that copyright in the works subsisted here.
In Gold Line Telemanagement Inc. v. Ereele GmbH, 2025 FC 904, the plaintiffs were an affiliated group of companies that owned and operated a global internet protocol television platform streaming multicultural programs.
The defendants – a digital marketing company in Austria and a provider, broker, and producer of Persian motion pictures in Iran – alleged that the plaintiffs’ platform provided film series and individual films over which the defendants had copyright. The defendants filed complaints with third-party application stores, including Instagram and Apple.
The plaintiffs brought an action arguing that the defendants’ complaints amounted to false and misleading statements endangering their business, given that copyright did not subsist in the films and film series.
The defendants’ counterclaim requested remedies including declarations that they owned and licensed the works that were the subject of the proceedings and that the plaintiffs breached their copyright in those works. However, the defendants’ participation ceased after the documentary production and before the discoveries.
The plaintiffs moved for summary judgment. They requested damages, declaratory relief, and a permanent injunction to prevent the defendants from further alleging copyright infringement or filing more complaints with third-party app stores.
Copyright issues
The Federal Court deemed the plaintiffs entitled to partial summary judgment and declaratory relief relating to the defendants’ failure to prove the subsistence and enforceability of their copyright in Canada.
The court ruled that the defendants failed to show that copyright subsisted in the subject works in Canada or that their copyright was enforceable against the plaintiffs in this country. The court noted that the plaintiffs did not assert their own copyright-related rights in the subject works.
The court said the defendants failed to satisfy the relevant terms under the Copyright Act, 1985. First, the court determined that the defendants were not entitled to the presumptions under s. 34.1(1) of the Copyright Act, which would have reversed the burden on plaintiffs’ motion and required the plaintiffs to disprove the defendants’ copyright in the subject works.
Second, the court held that the defendants failed to discharge their burden to establish on a balance of probabilities that the subject works complied with one of the conditions under s. 5(1) of the Copyright Act, such that the legislation would recognize and protect the copyright of works created overseas by foreign authors and makers of cinematographic works.
Trademark claim
The court ruled that the plaintiffs failed to prove their claim under s. 7(a) of the Trademarks Act, 1985. The court explained that the plaintiffs failed to establish a causal link between the defendants’ allegedly wrongful making of false and misleading statements and the supposed damage suffered.
The court added that the plaintiffs failed to show a basis for the grant of a permanent injunction. The court found no evidence supporting any negative impacts due to the defendants’ filing of complaints, which would justify intervening to prevent even more harm.
