Procedural express lanes in IP litigation
Intellectual property infringement actions in the Federal Court of Canada (where most copyright and trademark litigation takes place) and Ontario courts can take years to resolve. Fortunately, these courts offer multiple options for adjudicating a dispute without the need for a full trial. Different procedures are appropriate in different circumstances, and while many disputes are amenable to a swift disposition, it is important to remember that sometimes a fulsome trial may be necessary. Selecting the best approach for disposing of a matter quickly, economically, and justly requires expertise and experience, because selecting the wrong approach can lead to unnecessary delay, expense, or an unfavourable result.
A defining feature of a full trial is the court’s ability to hear, weigh, and rely on viva voce evidence: oral testimony given in real time in front of the parties, their counsel, and the court. This includes fact evidence from lay witnesses and opinion evidence from expert witnesses. Viva voce evidence is particularly important in cases where the court must consider conflicting evidence and assess the credibility of witnesses. But what about cases where the court need not address such issues, for example where credibility is not a factor or where the parties agree on the underlying facts?
Copyright and trademark disputes often fall into this latter category. The parties may disagree on who owns rights but agree on the timeline and sequence of events leading up to their dispute. Or there may be no dispute over ownership, only whether one party’s conduct actually infringes on the other’s exclusive rights. In such circumstances, the parties may have recourse to summary or streamlined court proceedings that will result in a timely and cost-effective resolution of the dispute. Three common and effective options are proceeding by way of an application, a motion for summary judgment or a motion for a summary trial.
Proceeding by way of an application
Both the Canadian Copyright Act and Trademarks Act, allow rightsholders to adjudicate disputes by way of an “application” instead of an “action.” The Ontario Rules of Civil Procedure and the Federal Courts Rules include substantially similar steps for proceeding by way of an application.
In an application, unlike an action, there is no “discovery” and no trial. During discovery, the parties exchange all relevant documents within their possession, including any they intend to rely on as evidence and any that might damage their case (which the other side can rely on). Each party is also “examined for discovery” out of court, and an adverse party’s answers can be read-in as evidence at trial – for example, to impugn a witness’ credibility. In essence, discovery is the process of obtaining all relevant documents and information, which are then whittled down into what will be used at trial alongside viva voce evidence.
In an application, the parties organize and present their evidence by way of sworn affidavits, with relevant documents attached as exhibits. Each party may then cross-examine the deponent(s) of the adverse party’s affidavit(s). Like an examination for discovery, cross-examinations are held out of court. But unlike an examination for discovery – which is wide-ranging in scope – a cross-examination is limited to the facts and documents set out in the deponent’s respective affidavit.
The parties then file their affidavits, transcripts from any cross-examinations, and written arguments with the court in the form of an “application record.” The parties can make oral arguments at a hearing before the court, but no evidence is presented or heard at the hearing. The court is asked to decide on the record before it and, for this reason, it is incumbent on each party to “put its best foot forward” from the outset.
Proceeding by way of an application has many advantages. By omitting both discovery and trial, the process is time and cost effective. An application is generally less intrusive and disruptive to a business’ day-to-day operations. A hearing only takes a half to a full day – as opposed to multiple days or weeks for a trial – and the wait time for a hearing date is generally shorter than a trial date. Notwithstanding the streamlined process, proceeding by way of an application also does not limit the remedies available to a party.
However, there are also disadvantages. The application process effectively requires a party to already have all the evidence necessary to prove its case. Thus, proceeding by way of an application may not be suitable in an IP dispute where the full extent of an infringer’s activities is not known to the rightsholder. In that case, the rightsholder may benefit from the discovery steps in an action. Furthermore, because the respondent to an application may not commence a counterclaim, a dispute involving reciprocal claims may not be suitable for determination by way of an application and may be converted into an action by the court.
Applications under the Federal Courts Rules are also common in a variety of other IP contexts. An appeal under Section 56 of the Trademarks Act – for example, of a Section 45 decision – must be brought by way of an application. Similarly, expungement proceedings under Section 57 of the Trademarks Act may be brought by way of an application. As a result, seasoned IP-counsel will be familiar with the application process and should know early on whether a case is amenable to determination by way of an application.
Summary judgment and summary trial
Both the Ontario Rules of Civil Procedure and the Federal Courts Rules allow a plaintiff or defendant in an action to bring a motion for summary judgment once a statement of defence has been filed. While there are similarities between the Ontario and Federal Court approaches to summary judgment, there are also subtle differences that may be relevant on a case-by-case basis.
A motion for summary judgment is a request to have the court decide a plaintiff’s claim or a defendant’s defence at an early stage and without the need for a trial. If the motion is successful, the court can grant relief to the successful party as if it were successful at trial. Under the Federal Courts Rules, the threshold for granting summary judgment is that the claim or defence raises “no genuine issue for trial”. Under the Ontario Rules of Civil Procedure, the threshold is “no genuine issue requiring a trial”. Semantics aside, summary judgment may be granted if the court is satisfied that a plaintiff’s claim or a defendant’s defence does not raise an issue of fact or law that can only be decided through a full trial with viva voce evidence.
In many ways, the procedure on a summary judgment motion is similar to an application. The parties prepare affidavit evidence and may cross-examine on the adverse party’s affidavit(s). The parties submit motion records including their affidavit evidence, transcripts of any cross-examinations, and written arguments. Oral arguments are then presented at a hearing before the court.
On a motion for summary judgment, the onus is on the moving party to demonstrate that its claim or defence – depending on whether the moving party is the plaintiff or defendant – raises no genuine issue. In other words, the moving party must satisfy the court that, on the record before it, there is no real question as to whether the moving party has met all the requisite elements of its cause of action (or defence). In practice, to grant summary judgment, the court must be satisfied that it has all the evidence necessary to fairly and justly adjudicate the dispute between the parties. Alternatively, if the court is satisfied that a claim has no legal basis, it may grant summary judgment dismissing the claim.
If, however, the court is not satisfied with the evidence before it but still believes that a full trial is unnecessary or would not be in the interests of justice, then the court may choose to hear, weigh, and rely on limited viva voce evidence in order to decide any outstanding issues. Under the Ontario Rules of Civil Procedure, this may be done by way of a “mini-trial” under Rule 20.04(2.2), whereby the court can order that any party present oral evidence subject to conditions imposed by the court. Under the Federal Courts Rules, if a motion for summary judgment is dismissed on the basis that the court believes there may be a genuine issue for trial, then a party can seek a summary trial by way of Rule 216. As in Ontario courts, the Federal Court may issue an order defining the scope of evidence to be heard on a summary trial.
If, following a mini-trial or summary trial, the court is satisfied that the evidence before it – including any viva voce evidence – is sufficient to adjudicate the dispute between the parties, then the court may grant judgment accordingly. Alternatively, if it is not so satisfied, then the court may direct that some or all of the outstanding issues be determined by way of a fulsome trial.
As the above overview illustrates, a significant advantage of summary judgment and/or summary trial is the flexibility inherent in the process. Both the Ontario Rules of Civil Procedure and the Federal Courts Rules create summary disposition regimes that may be tailored to the unique circumstances of a given case. Another advantage of the summary disposition regime is that a motion for summary judgment or summary trial can generally be brought at any time before a matter is set down for trial. For example, if in an action, a party uncovers evidence through discovery that definitively proves its case, it may move for summary judgment without having to follow through with further steps in the action. This can save the parties, and the court, precious time and resources.
However, Ontario courts, the Federal Court, and the Supreme Court of Canada have all cautioned against pursuing summary disposition in circumstances where it is clearly inappropriate. This is because an unsuccessful summary judgment or summary trial motion does not dispose of the matter but, instead, simply adds further delay and costs to resolving a dispute. Therefore, parties are well advised to seek the advice of experienced litigation counsel before bringing a motion for summary judgment and/or summary trial.
Shift Law has experience and expertise in summary judgment motions and summary trials in both the Ontario Superior Court of Justice and the Federal Court, and has obtained favorable outcomes for its clients through summary dispositions – including in:
- Boaden Catering v Real Food, 2016 ONSC 4098, aff’d 2017 ONCA 248;
- Mold.ca Inc et al v Moldservices.ca Inc et al (10 January 2014), CV-13-480392 (ONSCJ);
- Collett v Northland Art Company Canada Inc, 2018 FC 269; and,
- Corey Bessner Consulting Inc v Core Consultants Realty Inc, 2020 FC 224.
