Law Times

lAw Times • April 7, 2014 Page 13 www.lawtimesnews.com Summary judgment changes IP boutiques hoping to benefit from Hryniak he Supreme Court of Canada's push for more summary judgments is an important change for the justice system at large but may have particular advantages for in- tellectual property boutiques. e Jan. 23 Hryniak v. Mauldin decision called for judges to make greater use of summary judg- ments rather than allowing civil cases to spiral into lengthy and ex- pensive trials. "I have a feeling it may impact IP more than other areas because courts have been very reluctant to serve summary judgments in IP cases," says Howard Knopf, counsel at Ottawa-based intellec- tual property boutique Macera & Jarzyna LLP. is reluctance pos- sibly stems from a lack of judicial expertise in intellectual property, Knopf suggests. Although the Federal Court has been willing to issue sum- mary judgments on patent cases, many of them have later been overturned on appeal, says Bere- skin & Parr LLP partner Robert MacFarlane. e Hryniak decision means "Court of Appeal resistance [to summary judgments] will di- minish," he believes. e possibility of quicker and less costly decisions is likely to ap- peal to many individuals and com- panies working with boutique law firms that come in all shapes and sizes but tend to emphasize the value offered to increasingly cost- conscious clients. "We take pride in the fact that we don't have to pay for marble staircases and things like that," says Knopf. "We avoid putting three to four lawyers on a case that could be handled well by one lawyer." MacFarlane says Hryniak won't necessarily benefit the boutique's larger clients, which include the likes of Target and Gap Inc., espe- cially in very complex cases. But for smaller copyright and trade- mark disputes that don't require expert evidence, summary judg- ments will oen be an attractive proposition, he feels. Expert witnesses are now sometimes seen as superfluous in intellectual property cases since the Supreme Court of Canada's landmark ruling in Masterpiece Inc. v. Alavida Lifestyles Inc. e decision stated: "Judges should be careful to question the necessity and relevance of such evidence, perhaps as part of a case management process, par- ticularly in light of the substan- tial cost of evidence that may be of little utility." e "sticking point," according to MacFarlane, will be in assessing when to pro- ceed to full trial in cases involv- ing conflicting expert evidence. Despite the Masterpiece deci- sion, judges overseeing pharma- ceutical cases still like to draw on expert evidence "to make sure they're getting the technology right," says Bruce Stratton, a part- ner at Dimock Stratton LLP. But Hryniak will be particularly helpful when it comes to intellec- tual property cases involving non- pharmaceutical clients, he believes. "A lot of pharmaceutical [IP] rules have been ironed out over the past couple of decades and are very much established," he says. For clients in other sectors, including the types of companies and individuals oen served by boutiques, the Supreme Court of Canada decision "should open the door for more resolution without a full trial," he notes. A recent patent case his firm was involved in took only a year from start to finish, including just five days in court. e case proves it's possible to resolve intellectual property litigation quickly, says Stratton. As well as opening up access to justice, summary judgments may help intellectual property lawyers get around the difficulties they of- ten face in securing interlocutory injunctions. MacFarlane says: "It's very dif- ficult — next to impossible — to get an interlocutory injunction Brief: Intellectual Property Boutiques and it's available to you 24 hours a day. s available y availabl y legal expertise? Looking for Find exactly what you need at www.CanadianLawList.com Starting a business, making a will or buying a house? Declaring bankruptcy, dealing with a personal injury, insurance claim or job loss? If you're in the midst of one of life's big events, help is as close as your smartphone, tablet or computer. Simply go to www.CanadianLawList.com to find the right lawyer for your particular legal need. www.CanadianLawList.com is Canada's most comprehensive online directory of lawyers and law firms. And it's easy to use! You can search by city, legal specialty, or name for listings and contact information. Find the legal expertise you need at www.CanadianLawList.com. Untitled-4 1 13-12-19 3:08 PM Bereskin & Parr LLP | 1.888.364.7311 | Toronto | Mississauga | Waterloo Region | Montréal | bereskinparr.com Untitled-1 1 14-03-31 6:53 PM in an IP case. In small trademark cases where we'd like to get an in- junction, summary judgment offers an alternative to getting a full deci- sion including an injunction." Hryniak isn't the only develop- ment likely to increase the number of summary judgments in the intel- lectual property arena. Federal anti-counterfeiting leg- islation currently before Parliament would also create civil remedies that might become the subject of sum- mary judgment decisions. Bill C-8 proposes changes to the Trademarks Act that would provide civil remedies for the manufacture, possession, import or export of un- authorized goods. It would also provide for civil remedies for the manufacture, possession, import, export, selling or distributing of "any label or packaging, in any form," that bears "a trademark that is identical to or confusing with a trademark registered for such goods" without the consent of the owner of the trademark. Attempts at reducing the cost of litigation could, of course, have the effect of slashing legal billings. But MacFarlane believes the changes ul- timately mean "more people will find litigation is available to them." Stratton agrees. "Clients are con- cerned with costs and the courts are taking that seriously," he says. "For lawyers, we want to have a respect- ed court system that operates in a relatively quick way and if we can provide that to our clients, that's going to help everyone." LT 'In small trademark cases where we'd like to get an injunction, summary judgment offers an alternative to getting a full decision including an injunction,' says Robert MacFarlane. BY CHARLOTTE SANTRY Law Times T

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