Law Times

Law times • SEPTEMBER 22, 2008 FOCUS ACTA on ice for election Lawyers lament state of anti-counterfeit laws L BY DARYL-LYNN CARLSON For Law Times awyers expect that Can- ada's commitment to the accelerated negotiations with G8 countries over the sum- mer to establish more effective anti-counterfeiting laws have been put on hold following the federal election call. Prime Minister Stephen Harper and the leaders of G8 countries had agreed to a new legal framework under the An- ti-Counterfeiting Trade Agree- ment, although details of the initiative have remained secret. The probability that the framework has been put on hold comes as a disappointment to lawyers who anticipate that un- der the new agreement, customs officials would be better em- powered to police shipments of counterfeit goods heading into the country. "If we had border enforce- ment, it would at least put us on the same footing as the United States," says Cynthia Rowden, a partner at Bereskin & Parr intel- lectual property law. "A lot of U.S. brand own- ers are comparing the protec- tion they see in the U.S. to what they get in Canada and in that regard, the big difference is that Canada does not have good border enforcement for counterfeiting. If you can't stop the merchandise at the border, you're dealt with using intellec- tual property laws or the crimi- nal code to get the products out of the marketplace." Rowden, along with Bereskin & Parr associate Megan Lang- ley Grainger, recently authored a chapter about Canada's laws in the World Trademark Review called "Anti-Counterfeiting 2008." In the chapter, which paints a bleak picture of the country's intellectual property laws, they note, "In Canada, there is gen- erally no customs enforcement of IP rights and customs of- ficials have traditionally seen their role as simply collecting the relevant duties." They continue to point out that the lack of enforcement coupled with limited border rem- edies available in IP statutes "has resulted in very few detention orders being issued; it is estimated that since 1994 only between 10 and 15 detention orders have been issued to rights holders by Canadian courts compared to tens of thousands of counterfeit shipment sei- zures in the United States." They also mention that amendments last year to the Criminal Code to cre- ate offenses for recording a movie for personal use, and recording a movie for commercial purposes led to publicity and several arrests, and resulted in a "dramatic drop in the number of counterfeit movies on the streets." For rights holders, criminal prosecution has tremendous advantages as the costs are borne by the state and deterrence comes on the heels of publicity of the arrests, the pair note in their chapter. Civil enforcement through Cynthia Rowden and Megan Langley Grainger, recently authored a chapter in World Trademark Review called 'Anti-Counterfeiting 2008' about Canada's laws. accessories in defiance of a Federal Court order. Both cases, however, took years to make their way through the courts. "The fact that there are a Anton Pillar orders, injunctions, and litigation can be costly, and is often only feasible for large businesses to quell significant infringements. Rowden acknowledges that two major court cases have gar- nered maximum damage awards to rights holders of brands in- cluding $700,000 awarded to Microsoft Corporation by a Quebec court last year after its software was pirated and sold, and in July of this year, an award of damages and costs exceeding $1 million against a fashion store chain in British Colum- bia that flagrantly continued to sell counterfeit Louis Vuitton number of recent cases where the courts have really listened to the concerns of the brand owners about the activities of sellers and have been prepared to issue the highest possible awards under the statute shows there's a will- ingness to confront this issue," says Rowden. "But while there are remedies, they take time." Ron Dimock of Dimock Stratton LLP intellectual prop- erty law, is also encouraged by the two large awards. "What seems to be the case now is the courts are giving extraordinary remedies as a final order not just as an interlocutory order," says Dimock. "It's sort of a completion through the entire litigation process of extraordinary relief, that the courts are now willing to apply that extraordinary re- lief. It certainly is better for the IP holders." Yet, he too wonders what will happen to the ACTA agreement. "Certainly the amendments will be dealt with in the next Par- liament but how quickly, who knows? This government was in power for only two years and it was only towards the end that the government put this forward." David Blais, a lawyer at Borden Ladner Gervais LLP, says the delay will indeed serve to perpetuate Canada's poor reputation globally, and stands to create a haven for counter- feiters. "Every country in the world has been criticizing our enforcement policies and the fact that our laws are outdated," he says. "The means by which coun- terfeiters are doing their business these days are far more sophisticated than our laws contemplate." He says one of his man- ufacturing clients recently complained that the Toron- to market was being flood- ed with counterfeit bicycle parts that were knock-offs of parts it produced. "They asked what can they do but really the first thing you have to tell them is you have that trademark on there, but there are no criminal provisions in the Trademark Act." He says he advised that while there is better recourse under copyright provisions, "a bicycle ped- al is not exactly a copyrighted material." But, like many lawyers try- ing their best to find protection for clients, Blais notes, "Some- times you have to scrounge to find copyright in an item be- cause we don't have trademark provisions in the country." He says ultimately there was no practical recourse he could provide for the client while, "this case was particularly difficult be- cause counterfeit items were be- ing imported into Canada. We need criminal provisions in the Trademarks Act and the Canadi- an border services agency needs to have express authority to seize and destroy goods," he asserts. "On the whole, this coun- try has failed to guarantee the rights of intellectual property right owners." LT PAGE 13 way to attract attention? Looking for an easier it's easy. www.lawtimesnews.com JobsInLaw_sailing ban5x.indd 1 9/11/08 1:48:39 PM

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