Law Times

www.lawtimesnews.com Law Times / January 28, 2008 Page 13 T he problem of counterfeit- ing in Canada is report- edly on the rise, and there have been several reports of sei- zures of imitation goods, as well as civil and criminal cases against those involved. Behind these sei- zures is an important partner- ship between law firms, private investigators, and the police — a partnership that those involved say is essential to combating this escalating problem. News last December of one of the largest seizures in Canadian history — a confisca- tion in Toronto of $10 million in counterfeit shoes, purses, wal- lets, clothing, jewelry, sunglasses, and luggage — highlights the co-operation of the three par- ties in conducting an investiga- tion. That probe, named Project Chameleon, focused over a num- ber of months on the wholesalers and importers of counterfeit lux- ury goods in the Toronto area. The end result: more than 35 charges were laid. Brian King, president of inves- tigation services firm King-Reed & Associates, whose firm worked with Toronto firm Kestenberg Siegal Lipkus LLP on the Project Chameleon investigation, says the private investigation firm is hired to work on a particular case by the law firm, which is also working on it from the civil angle, on behalf of the brand manufacturers. "The lawyers tend to take the lead role in co-ordinating everything and they also assist . . . police familiar with these types of cases on potential charges, that type of thing. The lawyers play a very important role," he says. In terms of the recent seizure, King says, "It was a great project where we had the co-operation of not only the law firm that was involved in this particular mat- ter but also the Toronto Police Service, because once we were able to establish the evidence that was required for search war- rants, they executed them." Lorne Lipkus, of Kestenberg Siegal Lipkus, runs a practice devoted entirely to anti-coun- terfeit enforcement. He says that over 90 per cent of the cases involve private investigators in some capacity. In the case in question, it was the investigators' job, after being retained by the law firm, to come up with an investigation plan and to obtain the evidence that enabled the police to put together the warrant, says Nino Calabrese, managing director and vice president of the central division of King-Reed. Along with the police, sev- eral members of the law firm attended the raid and assisted in bagging, tagging, and identify- ing the counterfeit merchandise. What started as an investiga- tion for six clients, says Lipkus, ended with seizures for as many as 20 clients. In general, in-house investiga- tors with the law firm are trained in counterfeit-recognition and in co-ordination, which is to say, assisting outside investigators in what they want them to do. After receiving information about sus- pected counterfeit in a particu- lar location, the firms' in-house investigators do the analysis and decide whether the case is worth pursuing. They then decide how to gather evidence, which in large cases often requires outside inves- tigators to learn the extent of the operation and gather the evidence necessary to take the next step, be it a cease-and-desist order or a police intervention, says Lipkus. Another area where investi- gators are able to assist lawyers is in dealing with confidential informants. "Lawyers wind up dealing with informants who provide information but may not be willing to come forward and testify," says Lipkus. As a result, they sometimes need to work with investigators, who are able to verify the information independently, so that they can give it to police or use it in the context of a civil lawsuit. Brian Isaac, a partner with Smart & Biggar, has acted for several brands in trademark- counterfeit cases, including a recent case that was decided in the Ontario Court of Justice in November. It was one of a tril- ogy of decisions against coun- terfeiters the firm was involved in that month. He says that bringing investigators into counterfeit cases is not uncom- mon, given that proof of illegal activity is required but counsel cannot be witnesses. As anti-counterfeiting has become such a big issue, in a lot of these cases now, compa- nies will have in-house inves- tigators or investigator co-or- dinators, so in some cases the client is dealing directly with the investigator, says Isaac. In others, counsel will direct the investigators. "We retain private inves- tigators all the time, and . . . you do get a close relation- ship with the investigators at times," he says. This type of situation isn't becoming more prevalent, says Isaac; however, the amount of work may be increasing, partly because of the "explosion" in counterfeit goods and the differ- ent types of distribution that are taking place. Isaac says his firm has clients for whom it handles numerous matters, as well as clients who deal directly with investigators. In these latter arrangeents, the investigators keep counsel in the loop to approach and seek advice whenever there is any- thing that is out of the normal course. With respect to clients for whom the law firm retains investigators directly, law- yers typically set the mandate carefully, in order to try to ensure that what comes out of it is as effective as possible for use against the infringer, he says. "In counterfeiting-enforce- ment, it typically is a three-way team or four-way — three-way being client, counsel, and the investigator; four-way being client, counsel, the investiga- tor, and the police in some cases," he says. According to the Canadian Anti-Counterfeiting Network, the list of those involved in anti- counterfeiting involves everyone from associations and several law firms, to investigation firms and brand owners. co-operation key to fight against counterfeiting FOCUS Finally, an online service as unique as you are Unlike any other online service available, Criminal Spectrum offers just what you're looking for to meet your criminal law information needs. Choose the package you want — Essential, Select, Classic or Premiere . Criminal Spectrum has been designed with the various types of criminal law practices in mind, integrating a comprehensive collection of case law and legislation with the following authoritative works: • Canadian Criminal Cases • Martin's Annual Criminal Code with annotations by Edward L. Greenspan, Q.C. and The Honourable Justice Marc Rosenberg • Martin's Related Criminal Statutes with annotations by Edward L. 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