NINTENDO OF AMERICA INC. Plaintiff v. KING OF WINDOWS HOME IMPROVEMENTS INC. AND, 2021 FC 291

Date: 20210401 Docket: T-2008-19 Citation: 2021 FC 291 Ottawa, Ontario, April 1, 2021 PRESENT: The Honourable Mr. Justice Ahmed BETWEEN: NINTENDO OF AMERICA INC. Plaintiff and KING OF WINDOWS HOME IMPROVEMENTS INC.

AND WAYNE MACKENNEY Defendants ORDER AND REASONS UPON CONSIDERING the Plaintiff’s ex parte mo t ion for default judgment again s t the Defendants under Ru l e 210 of the Federal Courts R ules , SOR/98-106 ( " “ Rules ” " ); AND UPON BEING S AT I SFIED that the Defendants have failed to ser v e and file a Sta t emen t o f Defen c e within the time set ou t in Rule 204 of the Rules ; AND UPON REVIEWING the eviden c e and oral s ubmissions of t he Plaintiff; IT IS ORDERED THAT : the Plaintiff’s motion for default judgment is granted. [ 1 ] The Plaintiff, Nin t endo o f America Inc., i s the o w ner of the Canadian trademark registrations listed in Exhibit " “A” " (the " “NINTENDO and POKEMON Trademarks” " ) . [ 2 ] I find that the Defendants have i nfringed the rights of the Plaintif f t o t he NIN T ENDO and POKEMON Trademar k s, contrary to sect i ons 19 and 20 of the Trademarks Act , RSC 1985, c T-13 ( " “ Trademarks Act ” " ) .

In particular, the Defendants imported into Canada video game consoles with packages bearing a design that is confusingly similar to the Plaintiff’s registered trademarks NES Design (Color) (TMA964700) and NES Controller Design (TMA1016852). The printed games list inside the video game console packages also bore marks that are confusingly similar to the Plaintiff’s registered trademarks PIKACHU (TMA565112) and PIKACHU (TMA565335).

Considering the factors enumerated under subsection 6(5) of the Trademarks Act , I find that a casual consumer somewhat in a hurry would likely confuse the marks that the infringing goods bear for t he NIN T ENDO and POKEMON Trademar k s ( Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée , 2006 SCC 23 at para 20 ). [ 3 ] The Plaintiff is the owner of the copyrighted works listed in Exhibit " “B” " (the " “NINTENDO Works” " ). [ 4 ] I find that the De f endant s have infringed the Plaintiff’s right s to the NINTE N DO Works, contrary to subsect i on 27(2) of the Copyright Act , RSC 1985, c C-42 ( " “ Copyright Act ” " ) .

In particular, the Defendants imported into Canada video game consoles that contain unauthorized copies of at least three of the Plaintiff’s registered copyrights, including TETRIS 2 (450098), TETRIS 2 (450099), and MARIO (1052603). As the Defendants imported 120 units of the infringing video game consoles, I find that the Defendants likely imported the goods for the purposes of sale or distribution, contrary to subsection 27(2) (

e) of the Copyright Act . [ 5 ] In light of the above findings, I order that the Defendants , and their officers, directors, servants, employees, agents, succes s ors and ass i gns, and an y o t her person under their po w er o r control, are permanently enjoined f r om: A . infringingthePla i ntiff’sexclusiverightstotheNINTENDO andPOKEMON Trademarks ; B . advertising,distributing, offeringfor s aleor se l ling their good s in associationwiththe N INTENDOandPOKEMONTrademarks, or anyother trademarks confusinglysimilar;and C . infringing the Plaintiff’s rights tothe NINTENDO Works. [ 6 ] The Defendants shall deliver up or destroy under oath, at their own expense, all goods, labels, packaging, advertising materials, signage, printed matter, including all plates, molds, matrices, and other material for producing or printing such items, and any other matter or materials in their collective or individual possession, power or control that would offend the injunction granted. [ 7 ] The Defendant s sha l l disclose t he full legal names and c ontact information of any known sources of the C oun t erfeit G oods , as def i ned in the Plaintiff’s Statement of Claim. [ 8 ] The Defendants s hall pay the Pla i ntiff $32,000 in damages for t hei r unlawful activities with respect to the NINTEN D O and POKEMON Trademarks.

In particular, I award the Plaintiff $8,000 in nominal damages for each of the four trademarks that I have found to be infringed ( Popsockets LLC v Case World Enterprises Ltd , 2019 FC 1154 at para 42 , citing Kwan Lam v Chanel S. de R.L. , 2016 FCA 111 at paras 17-18 ).

[9] The Defendants shall pay the Plaintiff $60,000 in damages for the infringement of the NINTENDO Works. In particular, I award thePlaintiff $20,000 in statutory damages for each of the three copyrighted works that I have found to be infringed, pursuant to subsection38.1(1)(

a) of the Copyright Act. This order is made in consideration of the factors enumerated under subsection 38.1(5) of the CopyrightAct, including the lack of good faith negotiations on behalf of the Defendants before the commencement of these proceedings, and todeter the Defendants and others from engaging in similar illicit activities (Nintendo of America Inc v King, 2017 FC 246 at paras 162-166). [10] I award the Plaintiff $10,000 in costs payable by the Defendants forthwith. The Plaintiff provided the Defendants with severalopportunities to settle this action without costs.

After agreeing to do so, the Defendants refused to sign the agreement containing theterms to which they had agreed in principle. Specifically, counsel for the Plaintiff sent the Defendants a settlement agreement on June18, 2020, and again on June 22, 2020 at the Defendants’ request. In the later message, counsel for the Plaintiff stated that if theDefendants did not execute the agreement by June 24, 2020, the Plaintiff would proceed with a motion for default judgment.

On June 26,2020, counsel for the Plaintiff informed the Defendants that the signed settlement agreement had not been received and that the Plaintiffwould therefore proceed with seeking default judgment. Considering the factors under Rule 400(3) of the Rules, I therefore find that thePlaintiff’s request for $10,000 in costs is suitable. [11] I grant the Plaintiff’s request for a confidentiality order under Rule 151 of the Rules with respect to exhibits HH, II, and JJ in theaffidavit of Jacinta De Abreu.

I find that the Plaintiff has a legitimate interest in maintaining the confidentiality of its settlementnegotiations with the Defendants, and that the salutary effects of the restriction requested by the Plaintiff outweigh the deleterious effectsupon the open court principle (Adeleye v Canada (Citizenship and Immigration), 2020 FC 681 at para 9, citing R. v Mentuck, 2001 SCC76 at para 32; Dagenais v Canadian Broadcasting Corp, (SCC), [1994] 3 SCR 835; Sierra Club of Canada v Canada(Minister of Finance), 2002 SCC 41). ORDER IN T-2008-19 THIS COURT ORDERS that: 1.

The Plaintiff’s motion for default judgment is granted. 2. The Defendants are prevented from further infringing the Plaintiff’s rights in and to theNINTENDO andPOKEMON Trademarks,and the NINTENDO Works.The Defendants shall deliver up or destroy any goods that would offend this injunction. 3. TheDefendantsshalldisclosethefulllegalnamesandcontact informationofanysourcesoftheCounterfeitGoods. 4. The Plaintiff is awarded $92,000 in damages, pluspre-and post-Judgment interest. 5. The Plaintiff is awarded $10,000 in costs, inclusive of disbursements. 6.

Exhibits HH, II, and JJ in the affidavit of Jacinta De Abreu as contained in the Plaintiff’s motion record shall be treated asconfidential. "Shirzad A." Judge FEDERAL COURT SOLICITORS OF RECORD DOCKET: T-2008-19 STYLE OF CAUSE: NINTENDO OF AMERICA INC. v KING OF WINDOWS HOMEIMPROVEMENTS INC. AND WAYNE MACKENNEY PLACE OF HEARING: HELD BY VIDEOCONFERENCE BETWEEN TORONTO AND OTTAWA,ONTARIO DATE OF HEARING: February 23, 2021 ORDER AND REASONS: AHMED J. DATED: April 1, 2021

APPEARANCES : Mark G. Biernacki Graham A. Hood For The Plaintiff No Appearance For The Defendants SOLICITORS OF RECORD : Smart & Biggar LLP Barristers and Solicitors Toronto, Ontario For The Plaintiff