Louis Vuitton Welcomes Major Victory In Canadian Counterfeiting Case

by Glen Shapiro, LawAndTax-News.com, New York

13 August 2008

It was announced on Tuesday that the Supreme Court of British Columbia had awarded luxury goods manufacturer Louis Vuitton Over CAD1mn in damages, punitive and exemplary damages, and legal costs, in a trademark and counterfeiting case in Canada.

Louis Vuitton Malletier, part of LVMH, revealed that the Supreme Court's decision represented the largest ever judgment in a trademark and counterfeiting case in Canada.

The lawsuit had been brought against 46353 B.C. Ltd, doing business as Wynnie Lee Fashion, Wynnie Lee, Francisca Hung-Yee Ngan, Lisa Le Dung Tran, 560148 B.C. Ltd, and Jacqueline Lee, located in Richmond, British Columbia.

According to Louis Vuitton, the Court ruled that:“[T]he historical once-only nominal award of damages [the Anton Pillar Order Structure] is inapplicable in the case of a group of defendants whose continuous and blatantly recidivist infringing activities have taken place over a period of three years … If a plaintiff was only entitled to a single award of damages under the ’nominal’ damages scale for multiple occasions of infringement, then once a defendant was found liable for infringement, the defendant would essentially be immune from liability for damages for all subsequent infringements.”

The judge further stated that:

“In my view, the evidence is clear that both before and following the commencement of this action the defendants W. Lee, W. Lee Corporation, Ngan and Tran, have acted willfully and knowingly in violation of the plaintiffs’ rights in the trademarks and copyrights…I agree with plaintiffs’ counsel’s submission that an award of statutory damages at the highest end of the scale — that in the amount of CAD20,000 per each of the Copyrighted Works infringements, is appropriate.”

The judge noted the defendants’ persistence in selling infringing products over the past six years, despite an Anton Pillar Order (ex parte seizure order), a Federal Court Judgment and several Cease and Desist Notices, all served against them.

She found that the defendants had knowingly committed deliberate and inexcusable repeat infringement of the plaintiffs’ trademarks and copyrights, failed to cooperate with the litigation, and therefore awarded special costs against them. She also awarded to Louis Vuitton recovery of its legal costs, to be assessed.

Nathalie Moulle-Berteaux, Intellectual Property Director of Louis Vuitton, announced that:

“We are extremely pleased by this precedent-setting victory in our global fight against counterfeiting, particularly in Canada where the legal framework for the enforcement of Intellectual Property rights is not as strong as in other countries. Today’s ruling by the Supreme Court follows the precedent set in our victory against Lin Pi-Chu Yang, which represented the largest ever default judgment in a Canadian counterfeiting case."

"In both cases, Louis Vuitton used an innovative approach to calculating profits and damages, to ensure the amounts awarded would be sufficient to serve as both punishment for violations in these cases and deterrence against future counterfeiting activities."

"We are delighted that these important decisions reflect that both the Federal Court of Canada and the Supreme Court of British Columbia recognize the importance of protecting both trademarks and copyrights. Through these decisions, the judges have sent a strong message to counterfeiters that their illegal activities will not be tolerated by the Canadian courts.”

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