Louis Vuitton Malletier S.A. et al. v. Singga Enterprises (Canada) Inc. et al., 2011 FC 776

• Judge: Russell, J.
• Court: Federal Court (Canada)
• Case Date: March 08, 2011
• Jurisdiction: Canada (Federal)
• Citations: 2011 FC 776;(2011), 392 F.T.R. 258 (FC)

Louis Vuitton Malletier v. Singga Ent. (2011), 392 F.T.R. 258 (FC)

MLB headnote and full text

Temp. Cite: [2011] F.T.R. TBEd. JL.016

Louis Vuitton Malletier S.A., Louis Vuitton Canada, Inc., Burberry Limited and Burberry Canada Inc. (plaintiffs) v. Singga Enterprises (Canada) Inc., Lisa Lam and Kenny Ko (also known as Wai Shing Lo and Shing Wai Lo), collectively doing business as Singga Enterprises Canada Inc., Yun Jaun Guo (also known as Jessie Guo and Yun Juan Jessie Guo), doing business as Carnation Fashion Company; and Monica Mac (also known as Jia Xin Mai Mac and Monica Jia Xin Mai Mac), Pablo Liang, Rebecca Mac and Gordon Chan (also known as Hung Bing Chan), collectively doing business as Altec Productions (defendants)

(T-1276-10; 2011 FC 776)

Indexed As: Louis Vuitton Malletier S.A. et al. v. Singga Enterprises (Canada) Inc. et al.

Federal Court

Russell, J.

June 27, 2011.

Summary:

The plaintiffs sued the defendants for trademark and copyright infringement. The plaintiffs moved for an order of summary trial for judgment against the defendants.

The Federal Court allowed the motion and awarded judgment to the plaintiffs.

Copyright - Topic 4481

Infringement of copyright - Acts constituting an infringement - General - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants - The Louis Vuitton plaintiffs asserted that the defendants had infringed the Louis Vuitton Copyrighted Works - The Federal Court allowed the action, finding that the defendants had "manufactured, imported, possessed (for the purpose of selling) and/or sold merchandise bearing at least one of the Louis Vuitton Copyrighted Works" - Further, based on their actions and admissions, each of the defendants clearly knew, or should have known, that the items they were selling infringed copyright in the Louis Vuitton Copyrighted Works - None of the defendants were, nor had ever been, authorized by the Louis Vuitton plaintiffs to manufacture, import, distribute, offer for sale, sell or otherwise deal in any product bearing the Louis Vuitton Copyrighted Works - By virtue of their activities, the defendants were in violation of ss. 3 and 27 of the Copyright Act and had infringed the rights of the Louis Vuitton plaintiffs in and to the Louis Vuitton Copyrighted Works - See paragraphs 109 to 111.

Copyright - Topic 4583

Infringement of copyright - Remedies - Injunctive relief - [See Trademarks, Names and Designs - Topic 1819 ].

Copyright - Topic 4586

Infringement of copyright - Remedies - Damages - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants - The Louis Vuitton plaintiffs asserted that the defendants had infringed the Louis Vuitton Copyrighted Works - The Federal Court allowed the action - Statutory damages for copyright infringement were awarded on a scale from $500 to $20,000 per work infringed - In exercising its discretion, the court was required to consider all relevant factors, including: "a. Good or bad faith; b. The conduct of the parties before and during the proceedings; and c. The need to deter other infringements of the copyrights in question." - The activities of the defendants had been wilful and knowing, and entirely in bad faith - The defendants treated with disrespect the process of the court, and at least the Altec defendants continued to engage in blatant recidivist counterfeit activities - Given their ongoing actions, there was a clear need to deter the defendants from continuing, and their actions were entirely dismissive of law and order - Each group of defendants infringed copyright in each of the two copyrighted works - Accordingly, the court found that statutory damages in the amount of $20,000, per each of the Louis Vuitton Copyrighted Works infringement, was appropriate, for a total of $40,000 per group of defendants - See paragraphs 154 to 160.

Damage Awards - Topic 2028.2

Exemplary or punitive damages - Trademark infringement - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants for trademark and copyright infringement - The Federal Court allowed the action - The plaintiffs were entitled to punitive and exemplary damages as against each of the defendants where the activities of each of the defendants were egregious - All of the defendants' actions had been going on over a sustained period of time, were clearly knowing, planned and deliberate, and had been conducted with full knowledge of the plaintiffs' rights in and to the Louis Vuitton and Burberry trademarks, respectively - The defendants had also attempted to deliberately conceal or cover up their wrong-doings, "avoiding dealing with unknown individuals, obscuring domain name ownership and switching websites, and/or hiding such goods from view of the public or anyone entering their premises" - The court found that the following amounts were appropriate awards as punitive and exemplary damages in respect of the various groups of tortfeasors: a. $200,000 payable jointly and severally by the Singga defendants; b. $250,000 payable jointly and severally by the Altec defendants; and c. $50,000 payable by the defendant Guo - See paragraphs 162 to 180.

Practice - Topic 5255.4

Trials - General - Summary trials - Availability of - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants for trademark and copyright infringement - The plaintiffs moved for an order of summary trial for judgment against the defendants - The Federal Court held that a summary trial judgment was appropriate, having regard to all of the evidence and jurisprudence - Other courts had "granted judgment on summary trial in cases of the manufacture, importation, distribution, sale and offer for sale of counterfeit goods, even in cases with multiple defendants, a complex fact pattern, numerous investigations and affidavits, and relatively large damages awards, thereby confirming the appropriateness of doing so." - See paragraphs 92 to 99.

Practice - Topic 7466.6

Costs - Solicitor and client costs - Entitlement to - Copyright actions - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants for trademark and copyright infringement - The Federal Court allowed the action - The court awarded solicitor and client costs to the plaintiffs - For a significant period of time, each of the defendants committed deliberate and inexcusable repeat infringement of the plaintiffs' trademark rights and copyright - The defendants had participated only to the minimal extent necessary in this proceeding, had forced delays in proceeding through lack of cooperation, and had failed to provide adequate, or in the case of the Altec defendants, any, documentary discovery - In their actions, the defendants had shown a disrespectful disregard for the process of the court, and, as a result, the plaintiffs had incurred higher legal fees and disbursements than would otherwise have been necessary - See paragraphs 182 to 187.

Practice - Topic 7466.7

Costs - Solicitor and client costs - Entitlement to - Trademark actions - [See Practice - Topic 7466.6 ].

Trademarks, Names and Designs - Topic 1803

Trademarks - Infringement - What constitutes - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants for, inter alia, trademark infringement - The Federal Court allowed the action, finding that the defendants' activities were contrary to the following statutory provisions: a. s. 19 of the Trade-marks Act, in that the defendants infringed the exclusive rights of plaintiffs in and to their trademarks; b. s. 20 of the Act, in that the use that the defendants made of the plaintiffs' trademarks was likely to lead the consuming public to believe or infer that the defendants' wares originated from or were authorized by the plaintiffs and was therefore deemed to have infringed the plaintiffs' exclusive rights in their trademarks; c. s. 22 of the Act, in that the use that the defendants made of the plaintiffs' trademarks was likely to have the effect of depreciating the value of the goodwill attaching thereto; d. s. 7(b) of the Act, in that the defendants called public attention and continued to call public attention to their wares and business in a manner that caused or was likely to cause confusion in Canada between their wares and business and the wares and business of the plaintiffs; e. s. 7(c) of the Act, in that the defendants passed off their wares as and for those of the plaintiffs; and f. s. 7(d) of the Act, in that the defendants used and continued to use, in association with wares and services, a description which was false in a material respect and was of such a nature as to mislead the public as regards to the character, quality and composition of such wares and services - See paragraphs 8 to 87 and 100 to 108.

Trademarks, Names and Designs - Topic 1814

Trademarks - Infringement - Persons liable - Director, officer or shareholder of company - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants for trademark and copyright infringement - The Federal Court allowed the action - The court held that all the personal defendants and corporate defendants were liable for the various acts of infringement - The evidence showed that the personal defendants, as directors or officers of the corporate defendants, were directly involved in the operations and dealt in the supply of counterfeit and infringing goods - See paragraphs 112 to 120.

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants for trademark and copyright infringement - The Federal Court allowed the action - An accurate or even reasonably-close calculation of damages was difficult - The court held that the $24,000 nominal damage award based on a single instance of infringement or turn-over was appropriate in the circumstances - Taking into account the inflation rate, $24,000 in 1997 was equivalent to $30,384.11 in 2009 and the court applied a base of $30,000 - Applying the instance and turn-over figures to each of the defendants, the court found that each group of defendants had the following liabilities to each of the plaintiffs as noted, for trademark infringement: a. Singga defendants: i. $150,000 to each of the Louis Vuitton plaintiffs (5 instances x $30,000); ii. $90,000 to each of the Burberry plaintiffs (3 instances x $30,000); b. Altec defendants: i. $240,000 to each of the Louis Vuitton plaintiffs (8 turn-overs x $30,000); ii. $240,000 to each of the Burberry plaintiffs (8 turn-overs x $30,000); c. Singga defendants and Altec defendants (jointly and severally for the activities of the Altec defendants for which the Singga defendants received a commission): i. $30,000 to each of the Louis Vuitton plaintiffs (1 turn-over x $30,000); ii. $30,000 to each of the Burberry plaintiffs (1 turn-over x $30,000); d. defendant Guo: i. $90,000 to each of the Louis Vuitton plaintiffs (3 instances x $30,000 each); and ii. $60,000 to each of the Burberry plaintiffs (2 instances x $30,000 each) - See paragraphs 124 to 152.

Trademarks, Names and Designs - Topic 1819

Trademarks - Infringement - Remedies - Injunctions - The plaintiffs (Louis Vuitton and Burberry) were in the business of luxury fashion accessories - They owned the respective trademarks and copyrights and were the only authorized manufacturers and distributors of genuine products bearing the respective trademarks - After conducting an investigation, the plaintiffs discovered that the Singga defendants, the Altec defendants and the Guo defendant (through Carnation) had knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton and/or Burberry items in Canada - The plaintiffs sued the defendants for trademark and copyright infringement - The Federal Court allowed the action - Given that the infringing activities of at least the Altec defendants were ongoing, and given the nature of and long standing activities of each of the defendants involved, the plaintiffs were entitled to declarations regarding validity and ownership, injunctive relief against the infringing activity and delivery up or destruction of infringing goods as appropriate remedies under s. 53.2 of the Trade-marks Act and ss. 34 and 38 of the Copyright Act - See paragraph 23.

Trademarks, Names and Designs - Topic 4411

Trademarks - Practice - Summary judgments - [See Practice - Topic 5255.4 ].

Cases Noticed:

Bristol-Myers Squibb Co. et al. v. Canada (Attorney General) et al., [2005] 1 S.C.R. 533; 334 N.R. 55; 2005 SCC 26, refd to. [para. 94].

Miura v. Miura (1992), 66 B.C.L.R.(2d) 345; 1992 CarswellBC 113 (C.A.), refd to. [para. 95].

Inspiration Management Ltd. et al. v. McDermid St. Lawrence Ltd. et al. (1989), 36 B.C.L.R.(2d) 202 (C.A.), refd to. [para. 96].

Wenzel Downhole Tools Ltd. et al. v. National-Oilwell Canada Ltd. et al. (2010), 373 F.T.R. 306; 87 C.P.R.(4th) 412; 2010 FC 966, refd to. [para. 97].

Louis Vuitton Malletier S.A. et al. v. 486353 B.C. Ltd. et al., [2008] B.C.T.C. Uned. 454; [2008] B.C.W.L.D. 5075; 2008 BCSC 799, appld. [para. 98].

Mentmore Manufacturing Co. and Rotary Pen Corp. v. National Merchandise Manufacturing Co. (1978), 22 N.R. 161; 89 D.L.R.(3d) 195; 40 C.P.R.(2d) 164 (F.C.A.), refd to. [para. 113].

Visa International Service Association v. Visa Motel Corp. (1984), 1 C.P.R.(3d) 109 (B.C.S.C.), refd to. [para. 113].

Microsoft Corp. v. 9038-3746 Quebec Inc. et al. (2006), 305 F.T.R. 69; 57 C.P.R.(4th) 204; 2006 FC 1509, refd to. [paras. 123 et seq.].

Ragdoll Productions (UK) Ltd. v. Jane Doe et al. (2002), 223 F.T.R. 112; 21 C.P.R.(4th) 213; 2002 FCT 918, refd to. [para. 125].

Louis Vuitton Malletier S.A. et al. v. Yang et al., [2007] F.T.R. Uned. 803; 62 C.P.R.(4th 362; 2007 FC 1179, appld. [paras. 126 et seq.].

Oakley Inc. et al. v. Jane Doe et al. (2000), 193 F.T.R. 42; 8 C.P.R.(4th) 506 (T.D.), refd to. [para. 129].

Telewizja Polsat S.A. et al. v. Radiopol Inc. et al. (2006), 292 F.T.R. 195; 52 C.P.R.(4th) 445; 2006 FC 584, refd to. [para. 158].

Whiten v. Pilot Insurance Co. et al., [2002] 1 S.C.R. 595; 283 N.R. 1; 156 O.A.C. 201; 2002 SCC 18, refd to. [para. 163].

Pro Arts Inc. v. Campus Crafts Holdings Ltd. et al. (1980), 10 B.L.R. 1; 28 O.R.(2d) 422; 50 C.P.R.(2d) 230 (H.C.), refd to. [para. 168].

Society of Composers, Authors and Music Publishers of Canada v. 728859 Alberta Ltd., [2000] F.T.R. Uned. 674; 6 C.P.R.(4th) 354 (T.D. Protho.), refd to. [para. 168].

Evocation Publishing Corp. v. Hamilton et al., [2002] B.C.T.C. Uned. 606; 24 C.P.R.(4th) 52; 2002 BCSC 1797, refd to. [para. 169].

Malletier S.A. et al. v. 486353 B.C. Ltd. et al., [2008] B.C.T.C. Uned. E10; 2008 BCSC 1418, refd to. [para. 177].

Prise de parole Inc. et al. v. Guérin, éditeur ltée (1995), 104 F.T.R. 104; 66 C.P.R.(3d) 257 (T.D.) affd. (1996), 121 F.T.R. 240; 73 C.P.R.(3d) 557 (F.C.A.), refd to. [para. 184].

Counsel:

Michael D. Manson and Karen F. MacDonald, for the plaintiffs;

Yun Jaun Guo, self represented;

Tak Chan (Licensed Paralegal), for the defendants, Pablo Liang, Monica Mac and Gordon Chan.

Solicitors of Record:

Smart & Biggar, Vancouver, British Columbia, for the plaintiffs.

This motion was heard on March 8, 2011, at Vancouver, British Columbia, by Russell, J., of the Federal Court, who delivered the following judgment on June 27, 2011.