Author: David McLauchlan

David McLauchlan

About David McLauchlan

David McLauchlan is an associate within the Intellectual Property Practice Group. He works chiefly in the areas of health and life sciences. He advises clients on drafting and negotiating research agreements, as well as on issues related to regulatory responsibility, ethics and compliance.

Destruction and Delivery Up: a Year in Review

Copyright and trade-mark owners whose IP is infringed may seek a variety of remedies against the perpetrators, including damages, injunctive relief and legal costs. Psychologically though, destruction and delivery up may provide the most satisfaction. Specifically provided for in the respective statutes,  these remedies allow the successful plaintiff to either compel the infringer to destroy the counterfeit items under oath or actually take possession of them. In this post, we survey destruction and delivery up orders granted and denied in 2019. Overall, the year’s rulings are mixed, demonstrating that even as the victim of infringement, “you can’t always get what you want.”

Luxury Goods

Luxury goods are common targets for counterfeiters, as this year’s crop of destruction and delivery up orders illustrates. Appearing four times before the Federal Court was Nathalie Marie Tobey, aka Nathalie Henrie. Operating out of a clandestine retail establishment on Old Yonge Street, Ms. Tobey was accused of selling counterfeit Givenchy, Louis Vuitton, Dior and Celine merchandise.  Her defence was essentially that a well-informed member of the public would not confuse the goods she was selling with the plaintiffs’. Justice Norris dismissed this defence as having “no hope of success whatsoever,” before ordering the delivery up of all goods bearing the plaintiff’s subject trademarks, at least, those not already seized by the Toronto Police Service.

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Can Canadian Courts Issue Site-Blocking Orders?

Can Canadian Courts Issue Site-Blocking Orders? Prior to last Friday, it would have been unprecedented. With the Federal Court’s decision in Bell Media Inc v GoldTV Services (2019 FC 1432), that is no longer the case.

Although it is a single trial court decision, owners of Canadian copyrights and their lawyers now have an affirmative answer and even a test to apply to the issue.

The case relates to two websites, GoldTV.biz and GoldTV.ca, which offered an unauthorized subscription service allowing users to stream copyrighted content. The copyright owners and exclusive licensees (Rogers Media Inc., Groupe TVA Inc. and Bell Media Inc.) objected to this, alleging infringement.

Conspicuous by his, her, or their absence were John Doe 1 and John Doe 2, the respective operators of the sites. Despite the plaintiff’s diligent efforts, identifying these entities proved impossible, with the judges in earlier stages of the proceedings commenting that this was likely due to “obvious efforts to remain anonymous and avoid legal action by rights holders…”

Caught in between were the nation’s internet service providers (ISPs). Indeed, in the absence of the defendant and faced with ongoing infringement of their rights, the plaintiffs sought site-blocking orders against eleven major ISPs. Of these, four consented to the order and four took no position. Distributel and Cogeco sought to vary the language of the order, and only TekSavvy opposed the order on the merits.

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