Pajama passing off case put to bed by Ontario Court

In Pandi v FieldofWebs.Com Ltd (2007 CanLII 27028 (ON SC), July 11 2007), Justice Low of the Superior Court of Justice of Ontario has dismissed a motion for an interlocutory injunction filed by the plaintiffs to:

• prevent the defendant from carrying on the business of selling footed pajamas to the public on the Internet; and
  
  
• require the defendant to transfer the domain names 'footedpajamas.com' and 'footedpjs.com'.

The action was initiated on the basis of passing off, copyright infringement, breach of confidence and breach of fiduciary duty.

The plaintiffs, Steve Pandi and Jumpin Jammerz LLC, operate a website located at 'www.jumpinjammerz.com' to sell footed pajamas to the public. Prior to litigation, defendant Field of Webs.com Ltd was a provider of web development and web hosting services to the plaintiffs. It was also hosting other websites with varying kinds of business. As part of the relationship with the plaintiffs, Field of Webs had access to the plaintiffs' database, which contained information on each of the sales transactions made by the plaintiffs (including date of purchase, quantity of items purchased, style and size of garments ordered and geographical location of the purchaser). The database contained no manufacturing or sourcing information.

In 2006 Field of Webs acquired the domain names 'footedpajamas.com' and 'footedpjs.com' from a third party to start selling footed pajamas to the public. It also approached the plaintiffs to obtain a wholesale price quote to supply it with footed pajamas. Since Field of Webs found the price unattractive, it decided to purchase its supply from another source. There was no agreement not to compete or not to solicit customers between Field of Webs and the plaintiffs.

Field of Webs acknowledged that the content of the plaintiffs' database is confidential information and that it had no right to use any such information for its own advantage. The main factual issue was therefore whether Field of Webs went into the plaintiffs' database other than at the direction of the plaintiffs and for the purpose permitted by the plaintiffs.

In order to grant a motion for interlocutory injunction, the court had to be convinced that there was a strong prima facie case in favour of the plaintiffs.

With respect to the ground of passing off, the court found that the plaintiffs had failed to show a strong prima facie case because:

• the domain name and the appearance or get-up of the plaintiffs' site and Field of Webs' site are well differentiated (including the colour schemes, type face, logos, models and poses of models);
  
  
• the goods of Field of Webs were not replicas of those of the plaintiffs and there was no evidence that the plaintiffs had acquired any goodwill in particular themes or print; and
  
  
• Field of Webs had removed the words 'Jumpin Jammerz' as one of the metatags associated with its site.

However, the court indicated that website appearance and goods can be instruments of passing off; moreover, the practice of using another trader's mark or name as a metatag for a website selling competing goods could be viewed as objectionable under certain circumstances.

With respect to the ground of copyright infringement, the court found that the plaintiffs had failed to show a strong prima facie case because:

• nothing in Field of Webs' website could be said to be copies of the plaintiffs' pages or photographic images; and
  
  
• the plaintiffs' texts used as place holders in the development stage of Field of Webs' website were not used in the actual website.

Therefore, there was nothing left to restrain.

With respect to the ground of breach of confidence, the court found that the plaintiffs had failed to show a strong prima facie case because:

• there was no direct evidence that Field of Webs went into the plaintiffs' database other than at the express request of the plaintiffs to run a report requested by the plaintiffs; and
  
  
• commonality in the themes, prints and colours of the goods offered by 20 suppliers of footed pajamas on the Internet could be observed and analyzed from their respective websites.

With respect to the ground of breach of fiduciary duty, the court found that the plaintiffs had failed to show a strong prima facie case because there was no evidence of:

• discretion given to Field of Webs regarding the plaintiffs' database, website or business in general; or
  
  
• authority to do anything with the data other than on the request and instructions of the plaintiffs.

In light of these findings, the court dismissed the motion.

The court indicated that the plaintiffs would also have failed to show that denial of the injunction would result in irreparable harm. In the court's view, damages or disgorgement of profits would be a complete remedy if the plaintiffs were successful at trial. However, counsel for Field of Webs suggested that because the costs of trial of the issues raised in this action would exceed the monetary values at stake, the outcome of the interlocutory motion would likely be final.

Marcel Naud, Léger Robic Richard LLP, Montreal