2011 FC 776, 2011 FC 776

[2013] 1 F.C.R. 413 T-1276-10 2011 FC 776 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 ) Indexed as: Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc.

Federal Court, Russell J.—Vancouver, March 8; Ottawa, June 27, 2011. Trade-Marks — Infringement — Motion for order on

summary trial pursuant to Federal Courts Rules , r. 216 for judgment against defendants — Unchallenged evidence revealing defendants carrying out infringing activities by selling counterfeit, infringing fashion accessories bearing plaintiffs’ trade-marks — Whether defendants infringing plaintiffs’ trade-marks — Clear that defendants not authorized by plaintiffs to sell counterfeit items — Defendants’ activities contrary to Trade-marks Act, ss. 7(a), (b), (c), 19, 20, 22 — Also infringing plaintiff Louis Vuitton’s copyrighted works — Basic principles of damages assessment found in Louis Vuitton Malletier S.A. v.

Yang, Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd. applied — In light of defendants’ blatantly recidivist activities, higher award of damages warranted — “N ominal damages” Anton Piller award calculated “per instance of infringement”, or where evidence available, “per inventory turnover” — Plaintiffs, equally entitled to compensatory, punitive, exemplary damages — Solicitor and client costs also appropriate — Motion allowed.

Copyright — Infringement — Defendants selling counterfeit fashion accessories infringing plaintiff Louis Vuitton’s copyrighted works contrary to Copyright Act , ss. 3 , 27 — Not possible for defendants to use their businesses or corporations to shield themselves from their actions in wilful, knowing sale of counterfeit, infringing goods.

Copyright — Damages — Defendants selling counterfeit fashion accessories infringing plaintiff Louis Vuitton’s copyrighted works contrary to Copyright Act , ss. 3 , 27 — Louis Vuitton entitled to recover statutory damages, profits under Copyright Act in relation to infringement by each group of defendants — Also entitled to compensatory, punitive, exemplary damages. Practice —

Summary Judgment — Motion for order on

summary trial pursuant to Federal Courts Rules , r. 216 — Defendants selling counterfeit, infringing fashion accessories — Whether evidence sufficient for adjudication on

summary trial —

Summary trial judgment appropriate in present case — Federal Courts Rules, rr. 213, 216 modelled after British Columbia Rules of Court, R. 18A — British Columbia case law instructive, persuasive in considering r. 216 motion — Judge on Rule 18A application should give judgment unless to do so unjust, regardless of complexity, conflicting evidence — British Columbia Supreme Court confirming appropriateness of granting

summary judgment in counterfeiting cases — Factors to consider including complexity of matter, urgency, costs — Appropriate to grant motion herein even when case involving multiple defendants, complex fact patterns, numerous investigations, affidavits, large damages awards. This was a motion by the plaintiffs for an order on

summary trial pursuant to rule 216 of the Federal Courts Rules for judgment against the defendants. The plaintiffs are the owners of valid and subsisting registered trade-marks used to identify their products in Canada. The defendants sell fashion accessories through warehouses, Web sites or from a retail store. Investigators observed several fashion accessories sold by the defendants that bore exact copies of the plaintiffs’ trade-marks and designs similar to the plaintiffs’ trade-marks, but which were not genuine merchandise.

The evidence revealed that the defendants carried out infringing activities through their businesses by knowingly and wilfully manufacturing, importing, advertising and/or offering for sale and selling counterfeit and infringing fashion accessories in Canada, bearing the plaintiffs’ trade-marks and/or trade-marks likely to be confused with the plaintiffs’ trade-marks. The plaintiffs’ position and their evidence in this motion stood for the most part unchallenged by the defendants. The principal issues were whether there was sufficient evidence for adjudication on

summary trial and whether the defendants infringed the plaintiffs’ trade-marks and Louis Vuitton’s copyrighted works. Held , the motion should be allowed. A

summary trial judgment was appropriate in the present case, having regard to all of the evidence and case law. Rules 213 and 216 of the Federal Courts Rules provide that a party may apply to the Court for

summary trial judgment in an action for which a defence has been filed but before the time and place for trial have been fixed. These rules were modelled after Rule 18A of the British Columbia Rules of Court . The British Columbia case law with respect to Rule 18A is instructive and may be persuasive in consideration of a motion for

summary trial under rule 216 . If the facts can be found as they would upon a trial, a judge on a Rule 18A application should give judgment, unless to do so would be unjust, regardless of complexity or conflicting evidence. Factors to consider in determining whether

summary trial is appropriate include the amount involved, the complexity of the matter, its urgency, any prejudice likely to arise by reason of delay, and the cost of taking the case forward to a conventional trial in relation to the amount involved. The British Columbia Supreme Court confirmed that it is appropriate to grant judgment on

summary trial in cases of the manufacture, importation, distribution, sale and offer for sale of counterfeit goods, even when multiple defendants, complex fact patterns, numerous investigations and affidavits, and large damages awards are involved. An adverse inference was also drawn against the defendants for their failure to cross-examine the plaintiffs’ affiants on their affidavits or to file responding or rebuttal evidence on

summary trial.

The defendants, through their businesses, imported, advertised, offered for sale and/or sold counterfeit and infringing items bearing theplaintiffs’ trade-marks. It was clear that such counterfeit items were never authorized by the plaintiffs, nor were the defendants everauthorized by the plaintiffs to manufacture, import, distribute, offer for sale, sell or otherwise deal in any product bearing the plaintiffs’trade-marks. The activities of the defendants were found contrary to paragraphs 7(a), (

b) and (c), and sections 19, 20 and 22 of the Trade-marks Act. Further, the defendants infringed copyright in the plaintiff Louis Vuitton’s copyrighted works contrary to sections 3 and 27 ofthe Copyright Act. The defendants could not use their businesses or corporations to shield themselves from their actions in the wilful andknowing sale of counterfeit and infringing goods. Given the difficulty in assessing damages compounded by the defendants’ failure to disclose their accounting records, the basicprinciples of damages assessment found in Louis Vuitton Malletier S.A. v.

Yang and in Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd.were applied in the present case. Where a defendant is engaged in continuous and blatantly recidivist activities over a period of time, aswas the case in the present instance, a much higher award of damages is warranted than in the case of a one-time execution of an AntonPiller order. The “nominal damages” Anton Piller award needs to be calculated on a “per instance of infringement”, or where theevidence is available, “per inventory turnover”.

Here, each plaintiff suffered damages due to the activities of the defendants and wereentitled to recovery of damages in accordance with the “nominal” damages scale. In addition to the damages or profits awarded for the defendants’ infringement of the plaintiffs’ rights under the Trade-marks Act, LouisVuitton was entitled to recover statutory damages and profits under the Copyright Act in relation to infringement by each of the groups ofdefendants of its copyrighted works. The plaintiffs were equally entitled to compensatory damages as well as punitive and exemplary damages.

The fact that the defendantswere not put on notice by the plaintiffs of their infringing activities did not alleviate the need to award punitive and exemplary damagesto denounce the prior wilful, knowing and recidivist activities of the defendants. A substantial monetary award against each of thedefendants was required to adequately compensate the plaintiffs for past activities and in order to prevent the defendants’ activities fromcontinuing in the future.

Finally, given the defendants disrespectful disregard for the Court’s process, and, as a result, the higher than usual legal fees anddisbursements for the plaintiffs, an award of solicitor and client costs was appropriate. STATUTES AND REGULATIONS CITED Copyright Act, R.S.C., 1985, c. C-42, ss. 3 (as am. by S.C. 1988, c. 65, s. 62; 1993, c. 44, s. 55; 1997, c. 24, s. 3), 27 (as am. idem, s. 15),34 (as am. by S.C. 1997, c. 24, s. 20), 38 (as am. idem), 38.1 (as enacted idem). Court Order Interest Act, R.S.B.C. 1996, c. 79, s. 7. Courts of Justice Act, R.S.O. 1990, c. C.43, s. 129.

Federal Courts Act, R.S.C., 1985, c. F-7, ss. 1 (as am. by S.C. 2002, c. 8, s. 14), 37(1) (as am. idem, s. 37). Federal Court Rules, SOR/98-106, r. 216(1). Federal Courts Rules, SOR/98-106, rr. 1 (as am. by SOR/2004-283, s. 2), 127(2) (as am. by SOR/2010-177, s. 1), 213 (as am. bySOR/2009-331, s. 3), 216 (as am. idem). Rules of Court, B.C. Reg. 221/90, R. 18A. Trade-marks Act, R.S.C., 1985, c. T-13, ss. 7(b),(c),(d), 19 (as am. by S.C. 1993, c. 15, s. 60), 20 (as am. by S.C. 1994, c. 47, s. 196), 22,53.2 (as enacted by S.C. 1993, c. 44, s. 234). CASES CITED applied: Louis Vuitton Malletier S.A. v. 486353 B.C.

Ltd., 2008 BCSC 799; Louis Vuitton Malletier S.A. v. Yang, 2007 FC 1179, 62 C.P.R. (4th)362. considered: Nike Canada Ltd. et al. v. Goldstar Design Ltd. et al., T-1951-95 (F.C.T.D.); Regina v. Lau, 48082-1, 48984-2C, reasons for sentencerendered by Chen J. dated November 16, 2006 (B.C. Prov. Ct.); Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd. et al., 2008 BCSC1418. referred to: Bristol-Myers Squibb Co. v. Canada (Attorney General), 2005 SCC 26, [2005] 1 S.C.R. 533, 253 D.L.R. (4th) 1, 39 C.P.R. (4th) 449;Miura v. Miura, , 66 B.C.L.R. (2d) 345, 40 R.F.L. (3d) 43 (C.A.); Inspiration Management Ltd. v.

McDermid St.Lawrence Ltd., , 36 B.C.L.R. (2d) 202, 36 C.P.C. (2d) 199 (C.A.); Wenzel Downhole Tools Ltd. v. National-OilwellCanada Ltd., 2010 FC 966, 87 C.P.R. (4th) 412, 373 F.T.R. 306; Mentmore Manufacturing Co., Ltd. et al. v. National MerchandisingManufacturing Co. Inc. et al. (1978), (FCA), 89 D.L.R. (3d) 195, 40 C.P.R. (2d) 164, 22 N.R. 161 (F.C.A.); VisaInternational Service Association v.

Visa Motel Corporation, carrying on business as Visa Leasing et al. (1983), (BCCA), 1 C.P.R. (3d) 109 at 112 (B.C.S.C.); Microsoft Corp. v. 9038-3746 Quebec Inc., 2006 FC 1509, 57 C.P.R. (4th) 204, 305 F.T.R. 69;Ragdoll Productions (UK) Ltd. v. Jane Doe, 2002 FCT 918, [2003] 2 F.C. 120, 21 C.P.R. (4th) 213, 223 F.T.R. 112; Oakley, Inc. v. JaneDoe, , 193 F.T.R. 42, 9 C.P.R. (4th) 506 (F.C.T.D.); Telewizja Polsat S.A. v. Radiopol Inc., 2006 FC 584, [2007] 1

F.C.R. 444, 52 C.P.R. (4th) 445, 292 F.T.R. 195; Whiten v. Pilot Insurance Co., 2002 SCC 18, [2002] 1 S.C.R. 595, 209 D.L.R. (4th)257, 20 B.L.R. (3d) 165; Nintendo of America Inc. et al. v. COMPC Trading Inc. et al. (September 22, 2009), Vancouver S082517(B.C.S.C.); Pro Arts, Inc. v. Campus Crafts Holdings Ltd. et al. (1980), (ON SC), 28 O.R. (2d) 422, 10 B.L.R. 1, 50C.P.R. (2d) 230 (H.C.); Society of Composers, Authors and Music Publishers of Canada v. 728859 Alberta Ltd., , 6C.P.R. (4th) 354 (F.C.T.D.); Evocation Publishing v.

Hamilton et al., 2002 BCSC 1797, 24 C.P.R. (4th) 52; Prise de parole Inc. v.Guérin, éditeur Ltée (1995), 66 C.P.R. (3d) 257, 104 F.T.R. 104 (F.C.T.D.), affd (1996), 73 C.P.R. (3d) 557, 206 N.R. 311 (F.C.A.). AUTHORS CITED Regulatory Impact Analysis Statement, SOR/2009-331, C. Gaz. 2009.II.2603. MOTION by the plaintiffs for an order on

summary trial pursuant to rule 216 of the Federal Courts Rules for judgment against thedefendants. Motion allowed. APPEARANCES Michael D. Manson and Karen F. MacDonald for plaintiffs. Yun Jaun Guo on her own behalf. Tak Chan (licensed paralegal) representing defendants Pablo Liang, Monica Mac and Gordon Chan. SOLICITORS OF RECORD Smart & Biggar, Vancouver, for plaintiffs. The following are the reasons for judgment and judgment rendered in English by Russell J.: THE MOTION [1] This is a motion by the plaintiffs, Louis Vuitton Malletier S.A., Louis Vuitton Canada, Inc., Burberry Limited, and BurberryCanada Inc. (collectively the plaintiffs) for an order on

summary trial pursuant to rule 216 [as am. by SOR/2009-331, s. 3] of the FederalCourts Rules [SOR/98-106, r. 1 (as am. by SOR/2004-283, s. 2)] for judgment against the defendants in the terms of the draft judgmentattached to the plaintiffs’ notice of motion as

Schedule A. BACKGROUND [2] None of the defendants, with the exception of Guo (doing business as Carnation Fashion Company), has filed any materials inresponse to this motion or attempted to cross-examine any of the plaintiffs’ affiants on their affidavits. [3] None of the defendants, once again with the exception of Guo, attended the hearing of this matter. However, immediately prior tothe hearing, defendant Ko, claiming to speak on behalf of himself, Lam and Singga Enterprises Canada Inc., wrote to the Court to requestan indefinite adjournment of the hearing for alleged health and injury reasons.

Nothing in Ko’s request was substantiated, hiscommunications with the Court were inconsistent, and evidence obtained by the plaintiffs strongly suggested that Ko was not beingentirely honest with the Court about his alleged injuries and their impact upon his ability to attend the hearing. In the end, the Courtdecided that Ko had not provided sufficient explanation or substantiation to warrant an adjournment.

In fact, the Court concluded that, onthe eve of the hearing, Ko was attempting to thwart the proceedings by seeking an adjournment on grounds that he was not prepared tosubstantiate. [4] At the commencement of the hearing on March 8, 2011, Mr. Tak Chan, a paralegal in Toronto, appeared before the Court andasked for an indefinite adjournment on behalf of M. Mac, Liang and Chan. Once again, nothing was presented to the Court to substantiateanything Mr.

Tak Chan said or to explain why, given the history of this dispute and previous directions given to the Altec defendants bythe Court, these particular defendants had waited until the hearing to request an adjournment. As with Ko and Lam, no motion record ormaterials was filed and there was insufficient evidence before the Court to allow the Court to determine whether anything that was saidas part of the request bore any relationship to reality. In the end, there was insufficient information and explanation to warrant anadjournment.

All defendants have been given ample time to file materials and to make themselves available. These defendants havesimply ignored Court procedure and directions and have attempted at the last minute to derail the hearing for no reason that they havethought it worthwhile to substantiate. Consequently, no adjournment was granted and the hearing proceeded as scheduled. [5] Guo is in a slightly different position from the other defendants. She did not file a motion record but she did attend the hearingand filed some documents that she thought had relevance to her position.

When she spoke at the hearing (through an interpreter) shereadily conceded that she had engaged in infringing activities as alleged by the plaintiffs, but she asked the Court to take into accountvarious mitigating factors when assessing damages and costs against her. [6] With the possible exception of Guo, the plaintiffs’ position in this motion and the plaintiffs’ evidence stands unchallenged.

Theplaintiffs conceded that Guo’s activities were not on a scale comparable to the other defendants and that, in coming to the hearing, shehad at least shown some respect for the proceedings and had taken seriously the allegations and the evidence presented by the plaintiffs.The same cannot be said of the other defendants. [7] Because the plaintiffs’ position and evidence stands almost unchallenged, I will follow closely their methodical presentation ofthe facts and the law.

My review of the evidentiary record reveals that they have stated the evidence accurately and that the conclusionsthey have asked the Court to draw are, if anything, decidedly on the conservative side. The evidence reveals that the Singga defendants

and the Altec defendants are sophisticated operators and the evidence against them took a significant amount of time and resources to gather. It has to be reviewed in some detail in order to gauge the full extent of their infringing activities. I find the assessment of the situation as found in the evidence presented by the plaintiffs to be fair and accurate. What the evidence reveals is as follows. [ 8 ] The plaintiff, Louis Vuitton Malletier S.A. (Louis Vuitton), is the owner of the trade-marks listed in

Schedule A [included in these reasons] to the statement of claim (the Louis Vuitton trade-marks), which have been used by Louis Vuitton to identify Louis Vuitton products in Canada, since at least as early as the dates listed in

Schedule A to the statement of claim. The Louis Vuitton trade- marks have been registered, or applied for, in Canada by Louis Vuitton for use in association with the wares and services also listed in

Schedule A to the statement of claim, and such registrations are valid and subsisting (with one application pending). [ 9 ] The Louis Vuitton trade-marks are and have been continuously used by Louis Vuitton in association with its products in Canada, and have never been abandoned. [ 10 ] Louis Vuitton is the only authorized manufacturer and distributor of genuine products bearing the Louis Vuitton trade-marks.

Louis Vuitton exclusively sells Louis Vuitton products in Canada through its wholly owned subsidiary, the plaintiff Louis Vuitton Canada, Inc. (Louis Vuitton Canada). [ 11 ] Louis Vuitton maintains strict quality control standards for all its products. Products bearing the Louis Vuitton trade-marks convey, and are associated with, the highest standards and quality.

All genuine Louis Vuitton products are inspected and approved by Louis Vuitton prior to distribution and sale, and are sold only through Louis Vuitton stores and Louis Vuitton boutiques within department stores, such as Holt Renfrew, or over the Internet at the Louis Vuitton authorized Web site <www.louisvuitton.com>. There are only nine Louis Vuitton stores and/or boutiques in Canada. [ 12 ] Louis Vuitton has established a well-known reputation and goodwill in the Louis Vuitton trade-marks in Canada.

As a result of the fame that the Louis Vuitton trade-marks have achieved in this country, the goodwill associated with the Louis Vuitton trade-marks is of significant value to Louis Vuitton and of fundamental importance to its overall business in Canada. [ 13 ] Louis Vuitton also owns copyrights in the multicolored monogram prints listed and shown in

Schedule C [included in these reasons] to the statement of claim (the Louis Vuitton copyrighted works), including a black version (the black multicolour monogram) and a white version (the white multicolour monogram). Business of the Burberry Plaintiffs [ 14 ] The plaintiff, Burberry Limited (Burberry), has continuously used in connection with its products a distinctive check trade-mark (the BURBERRY CHECK) since the 1920s, the BURBERRY word mark since 1856, and the EQUESTRIAN KNIGHT DEVICE since 1901 (collectively, the Burberry trade-marks). Burberry is the owner of the Burberry trade-marks as listed in

Schedule B [included in these reasons] to the statement of claim, which have been used by Burberry to identify Burberry products in Canada, since at least as early as the dates listed in

Schedule B to the statement of claim. The Burberry trade-marks have been applied for and registered in Canada by Burberry for use in association with the wares and services also listed in

Schedule B to the statement of claim, and such registrations are valid and subsisting. [ 15 ] The Burberry trade-marks have been continuously and extensively used by Burberry in Canada in association with its products in Canada, and have never been abandoned. [ 16 ] Burberry is the only authorized manufacturer and distributor of genuine products bearing the Burberry trade-marks. Burberry Canada Inc. (Burberry Canada) is an authorized distributor of Burberry products in Canada. [ 17 ] Burberry has direct control over the character and quality of the products and services associated with the Burberry trade-marks.

The Burberry trade-marks inform the prospective customer that what he or she is about to purchase is made of the finest materials, is a product of the highest quality and workmanship, and is backed by a company that stands behind the high quality of its products. All genuine Burberry products are inspected and approved by Burberry prior to distribution and sale, and are sold only through Burberry stores and through speciality department stores, such as Holt Renfrew, Ogilvy, W&J Wilson and Leone. [ 18 ] Burberry has established a well-known reputation and goodwill in the Burberry trade-marks in Canada.

As a result of the fame that the Burberry trade-marks have achieved in this country, the goodwill associated with the Burberry trade-marks is of significant value to Burberry and of fundamental importance to its overall business throughout Canada. The Defendants [ 19 ] The defendants Singga Enterprises (Canada) Inc. (the Singga corporation), Lisa Lam (Lam) and Kenny Ko (Ko) (collectively, the Singga defendants) operate a business (Singga) under the corporate and trade-name Singga Enterprises Canada Inc.

The Singga defendants offer for sale and sell fashion accessories through their physical warehouse located at the back alleyway entrance to 101–3373 Kingsway, Burnaby, British Columbia, V5R 5K6 (the Singga warehouse), and through their Web sites at <singga.ca> and <singga.com>. The Singga defendants represent to the public that the Singga business has warehouses and distribution capabilities across Canada, and carries on the activities outlined below on a cross-Canada basis. [ 20 ] The defendant Lam is, and at all material times has been, the sole officer and director of Singga corporation.

The defendant Ko is, and at all material times has been, the principal in control of Singga corporation. Both Lam and Ko have expressly directed, ordered, authorized, aided, and abetted the activities of Singga, and both have personally been involved in the activities of Singga, as shall be outlined in further detail below. [ 21 ] The defendants Monica Mac, a.k.a. Jia Xin Mai Mac and Monica Jia Xin Mai Mac (M. Mac), Pablo Liang (Liang), Rebecca Mac (R. Mac) and Gordon Chan a.k.a.

Hung Bing Chan (Chan) (collectively, the Altec defendants) operate a business, under the name Altec Productions (Altec), through their Web sites at <altecproductions.com> and <aporder.com> and through their warehouse located at Unit

16–300 Don Park Road, Markham, Ontario, L3R 2V1 (along with a previous warehouse location in Markham, Ontario) (the Altec warehouse). The defendants M. Mac, Liang, R. Mac and Chan incorporated a company shortly before commencement of this action (2247283 Ontario Inc., doing business as Altec Productions, of which M. Mac is the sole named officer and director), but each of them has and continues to expressly direct, order, authorize, aide and abet the activities of Altec, and are all personally involved in the activities of Altec, as shall be outlined in further detail below.

Altec is engaged in its activities on a cross-Canada basis, as shall also be outlined in further detail below. [ 22 ] At least in or about 2009 and early 2010, Singga also directed potential customers to Altec for the purpose of purchasing large volumes of products in Ontario and Altec has paid Singga a commission for such sales. [ 23 ] The defendant Yun Juan Guo a.k.a. Jessie Guo (Guo) operates her business, under the business name Carnation Fashion Company (Carnation), from a retail store located at 101–3373 Kingsway, Burnaby, British Columbia, V5R 5K6.

The defendant Guo represents Carnation as “Wholesalers and/or Manufacturers”. The Singga warehouse is located directly behind Carnation. [ 24 ] It is through the businesses as outlined above that the defendants have carried out their infringing activities.

Activities of the Singga Defendants [ 25 ] Starting at a time unknown to the plaintiffs, but since at least as early as January 2008, the Singga defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and infringing fashion accessories, specifically handbags, in Canada, bearing the Louis Vuitton trade-marks and/or trade-marks likely to be confused with the Louis Vuitton trade-marks (counterfeit and/or infringing Louis Vuitton items), some of which bear unauthorized reproductions of the Louis Vuitton copyrighted works.

Further, starting at a time unknown to the plaintiffs, but since at least as early as June 2009, the Singga defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and infringing fashion accessories, specifically handbags, in Canada, bearing the Burberry trade-marks and/or trade-marks likely to be confused with the Burberry trade-marks (counterfeit and/or infringing Burberry items). [ 26 ] Such activities of the Singga defendants have been carried out over a sustained period of time, with full knowledge of the plaintiffs’ respective rights in and to the Louis Vuitton and Burberry trade-marks and the Louis Vuitton copyrighted works.

Their activities are large in scale, involving the manufacture and importation of bulk quantities of counterfeit and/or infringing Louis Vuitton and counterfeit and/or infringing Burberry items (collectively, the counterfeit and/or infringing items), and Canada-wide distribution, offer for sale and sale of such items. [ 27 ] In or about September 2008, it came to Louis Vuitton’s attention that the Singga defendants were engaged in the sale of counterfeit and/or infringing Louis Vuitton items.

In July 2008, the director of civil enforcement for North America at Louis Vuitton observed several handbags bearing trade-marks confusingly similar to some of the Louis Vuitton trade-marks, at a store operating as “Les Boutiques Sieur de Champlain” in Québec (Quebec), and proceeded to purchase two of such handbags. On approaching the owner of Les Boutiques Sieur de Champlain, Louis Vuitton was advised that such items had been supplied to the store by the Singga defendants in or about January 2008.

In an invoice to Les Boutiques Sieur de Champlain, the Singga defendants listed the items in question using Louis Vuitton’s famous LV trade-mark. [ 28 ] On or about November 10, 2008 and January 12, 2009, printouts were obtained from the Singga defendants’ Web site at <singga.ca>, where the Singga defendants were offering for sale handbags bearing trade-marks confusingly similar to one or more of the Louis Vuitton trade-marks and some bearing substantial reproductions of the Louis Vuitton copyrighted works.

The WHOIS CIRA [Canadian Internet Registration Authority] information for <singga.ca> from September 2009 confirms that such domain name is, and was since at least July 2007, owned and controlled by the Singga corporation, with Ko as the administrative contact. [ 29 ] In March 2009, an individual employed by the investigation company BCS Investigations arranged a meeting with Ko at the Singga warehouse. On or about March 9, 2009, the investigator attended at the Singga warehouse (along with another colleague employed by BCS Investigations).

Handbags which bore the Louis Vuitton trade-marks or trade-marks substantially similar to the Louis Vuitton trade-marks were observed in the Singga warehouse, none of which appeared to be authorized merchandise. [ 30 ] A female in attendance at the Singga warehouse introduced herself to the investigators as “Lisa” (subsequent investigations confirmed such individual to be the defendant Lam), and began showing merchandise to the investigators, advising that “Kenny” would arrive soon.

Lam produced a catalogue showing handbags bearing the Louis Vuitton trade-marks, some with the Louis Vuitton copyrighted works, and other luxury branded goods. Lam advised the investigators that all products were from China, and that Singga had warehouses in Vancouver, Edmonton, Toronto and Halifax. [ 31 ] Ko arrived at the Singga warehouse with a woman who was introduced as his wife. Ko took over the meeting with the investigators, and provided information on bulk purchases and discounts, implying that he could fill orders for 200–300 items within 45 days by filling such orders in his factory.

Ko offered to provide a catalogue (containing over 500 items) and samples of products. [ 32 ] During the attendance at the Singga warehouse on March 9, 2009, both Ko and Lam admitted to the investigators that the designer handbags in their catalogues were not real, and Ko implied that he attempted to get around trade-mark issues with brand names.

Ko advised that he did business across Alberta to Nova Scotia, and attended trade shows in Toronto and Edmonton. [ 33 ] On March 18, 2009, the same BCS investigator visited the Singga warehouse, and Ko provided several sample handbags to the investigator, including two infringing handbags bearing trade-marks substantially similar to some of the Louis Vuitton trade-marks. Singga’s model numbers for the infringing handbags both included “LV” at the beginning. [ 34 ] On May 25, 2009, the BCS investigator again attended at the Singga warehouse to place an order.

The investigator originally spoke with Ko’s wife, who advised the investigator she should speak directly with Ko. The investigator subsequently placed a purchase order with Ko, which included two “LV” models for which the investigator had previously been provided samples, and Ko advised the models would be ordered. When the investigator asked Ko about the possibility of purchasing “look-a-likes”, Ko advised that he carried

Coach, Chanel, Guess, Louis Vuitton and Prada, and also explained to her how they got around customs with manufacturing tricks on Chanel product. Ko advised that the investigator could send him a picture of a look-a-like product, for which he would quote a price and then place an order in China, which would subsequently be delivered to Canada by air. [ 35 ] When the investigator inquired specifically about “Louis Vuitton look-a-likes”, Ko showed the investigator an alleged “real one”, which was a high quality counterfeit handbag bearing one or more of the Louis Vuitton trade-marks.

Ko warned the investigator that such a bag could not be displayed for selling, but sold only to people the investigator knew. [ 36 ] On June 8, 2009, the BCS investigator re-attended the Singga warehouse, along with a second investigator of BCS Investigations, who was introduced to Ko as a retailer who was interested in “look-a-like” designer handbags.

Lam was in attendance at the Singga warehouse, but only Ko dealt directly with the investigators. [ 37 ] At the request to see “look-a-like” handbags, Ko showed the investigators some purses bearing Chanel and Guess trade-marks, again explaining how the Chanel CC trade-mark was created after bringing it across the border, and acknowledging that he used to import a lot more items three or four years ago, but that more recently it had been more difficult at the border, specifically for “Louis Vuitton” items.

Other brand names, including Burberry, were seen in the Singga warehouse, none of which appeared to be authentic. Ko refused to sell “look-a-like” Louis Vuitton handbags to the new BCS investigator, with whom he had not dealt previously. [ 38 ] Ko met with the first BCS investigator (with whom he had previously had dealings) alone in his office, and provided her with a sample counterfeit handbag and cloth-cover bag, bearing one or more of the Louis Vuitton trade-marks. Ko also provided her with a CD catalogue of products available for purchase from Singga.

The CD catalogue contained numerous offerings of counterfeit wallets and handbags bearing one or more of the Louis Vuitton trade-marks.

Ko instructed the investigator not to show either the counterfeit “Louis Vuitton” handbag or the CD/pictures to her colleague. [ 39 ] While Ko met with the first BCS investigator, the second BCS investigator inspected half-way into the back of the Singga warehouse, and observed approximately 10 to 15 handbags on a shelf bearing the Louis Vuitton trade-marks or trade-marks substantially similar to the Louis Vuitton trade-marks, none of which were genuine. [ 40 ] On or about June 19, 2009, Burberry determined that Singga’s Web site at <singga.ca> was offering for sale handbags bearing one or more of the Burberry trade-marks.

This Web site also continued to offer for sale handbags bearing trade-marks confusingly similar to one or more of the Louis Vuitton trade-marks, with substantial reproductions of the Louis Vuitton copyrighted works. [ 41 ] On June 22, 2009, the second BCS investigator re-attended the Singga warehouse with another colleague.

The investigator purchased nine handbags from Ko, including several “Louis Vuitton” and “Burberry” handbags, each of which bore one or more of the Louis Vuitton trade-marks (including labels with Louis Vuitton’s “LV” trade-mark), and/or trade-marks substantially similar thereto, or one or more of the Burberry trade-marks. The handbags bearing the Burberry trade-marks were hidden in the back of the warehouse in a box. Ko again dealt directly with the investigators, while Lam was present in the Singga warehouse.

Ko advised the investigators not to display the “look-a-likes”. [ 42 ] Ko agreed to provide the investigators a price quote for 500 purses, and that the minimum for such a bulk order would be 50. Ko indicated he could copy any style from the Louis Vuitton and Burberry Web sites and he just needed a photograph of the item to be sent to him. Ko advised the investigators that he preferred the eastern market in Canada, including Alberta and Toronto, stating that he had 100 retail customers in Eastern Canada and 120 customers in Alberta.

He also stated that he only sold the counterfeits to his “old customers”. [ 43 ] The investigators requested the location of Singga’s warehouse in Alberta, and Ko gave them a piece of paper with the name “PRIME TIME”, and an address, written on it. Ko also invited the investigators to visit Singga’s booth at the Alberta Gift Show in Edmonton. [ 44 ] An investigator from Price-Langevin & Associates Inc. of Edmonton, Alberta, went to the 2009 Alberta Gift Show in Edmonton on August 18, 2009 and attended Singga’s booth. Ko was operating the booth.

Ko advised the investigator that Singga can only distribute to Alberta and Ontario, and that they could not provide products in British Columbia. [ 45 ] On October 29, 2009, an investigator from the investigation firm IPSA International attended the Singga warehouse for a prearranged meeting with Ko. Ko took the investigator to an office in the Singga warehouse, where the investigator observed a counterfeit handbag bearing one or more of the Burberry trade-marks. [ 46 ] The IPSA investigator inquired about the purchase of “name brand stuff, like LV, Gucci, Burberry, Prada”.

Ko advised the investigator that there was a crackdown in China on LV and Burberry, but that he could get it from Guangzhou and confirmed that he could deliver 50–100 bags to Toronto. Ko also advised that he did not keep his bags in the store because it was “dangerous”, and also indicated that he did not trade with “white people”, as he was very cautious and has been caught before.

Ko also advised he sold a lot of Burberry before, and that he had previously received a warning letter from LV. [ 47 ] On October 30, 2009, the IPSA investigator subsequently contacted Ko and sent an e-mail to Ko to place an order for 50 “Louis Vuitton” handbags and 50 “Burberry” handbags, which Ko had advised he could make available.

Ko sent the investigator an e-mail on October 30, 2009, attaching screen captures from Louis Vuitton’s legitimate Web site, indicating that he could obtain such items for $25 each. [ 48 ] In mid-November 2009, Ko ultimately advised the IPSA investigator that he could not fill the order, but directed the investigator to his friend in Toronto, M. Mac of Altec to fill the order locally in Toronto. Ko received a commission on the December 2009 to February 2010 sales of counterfeit items by Altec.

The defendant Liang confirmed that Ko contacted Altec to ensure that Ko would receive a commission prior to referring the IPSA investigator to Altec for the referral orders. [ 49 ] In late February and early March 2010, another investigator from IPSA e-mailed Singga at singga27@yahoo.ca, and

corresponded with Lam about purchasing handbags for a new retail store. The investigator attended the Singga warehouse on March 8, 2010 and met with Lam, as well as Ko and his wife. The investigator was shown a folder that contained several photographs of handbags, including approximately 20 photographs of counterfeit handbags bearing one or more of the Burberry trade-marks.

While Lam and Ko advised that they “no longer sell counterfeit products” and represented to the investigator that the handbags were “not Burberry” and were legal to sell, Lam and Ko proceeded to sell the investigator two counterfeit handbags bearing one or more of the Burberry trade- marks.

At the same time, as outlined below, counterfeit and/or infringing Louis Vuitton items were still being offered for sale by the Singga defendants through <singga.ca>. [ 50 ] Throughout the investigations conducted into the activities of the Singga defendants, the Singga defendants continued to offer for sale and sell counterfeit and/or infringing Louis Vuitton items (including some bearing the Louis Vuitton copyrighted works) and counterfeit and/or infringing Burberry items through their Web sites.

Specifically, the plaintiffs have produced evidence of the following instances of continued offers for sale (all subsequent to the first found instances of November 2008 for Louis Vuitton and June 2009 for Burberry and noted above): a.

For Louis Vuitton: i. on April 24, 2009, continued offer for sale through their Web site at <singga.ca>; ii. on September 16, 2009, continued offer for sale through their Web site at <singga.ca>; iii. on February 1, 2010, continued offer for sale through their Web site at <singga.ca>; iv. on March 26, 2010, continued offer for sale through their Web site at <singga.ca>; and v. on April 22, 2010, continued offer for sale through their Web site at <singga.ca>. b.

For Burberry: i. on September 16, 2009, continued offer for sale through their Web site at <singga.ca>; ii. on January 28, 2010, continued offer for sale through their Web site at <singga.ca>; and iii. on March 2, 2010, continued offer for sale through their Web site at <singga.com>. [ 51 ] The WHOIS information for <singga.ca> and <singga.com> confirms Singga Corporation as the registrant (with Ko as the administrative contact) for <singga.ca> (both as of September 2009 and July 2010), and Ko as the registrant and administrative contact for <singga.com>. [ 52 ] Further, between August 2009 and January 2010, several visits were made by investigators from Price-Langevin & Associates Inc. to the business operating as “Prime Time”, a retail store located at Unit 1076–9499 137 Avenue, Edmonton, Alberta , which Ko had represented was Singga’s “Alberta warehouse”.

During such visits, counterfeit and/or infringing items were observed and purchased. Specifically, the following observations and purchases were made: a.

On August 13, 2009: i. observation of approximately 45 counterfeit and infringing necklaces bearing the LV trade-mark and approximately 10 purses bearing one or more of the Louis Vuitton trade-marks and/or substantially similar trade-marks; ii. observation of at least seven counterfeit purses bearing one or more of the Burberry trade-marks; iii. a purchase of three counterfeit necklaces bearing the LV trade-mark, and two counterfeit purses bearing the Louis Vuitton trade- marks and/or substantially similar trade-marks; and iv. a purchase of two counterfeit purses bearing one or more of the Burberry Trade-marks. b.

On October 19, 2009: i. observation of approximately seven counterfeit handbags that bore one or more of the Burberry trade-marks; ii. observation of approximately six counterfeit and infringing handbags that bore one or more of the Louis Vuitton trade-marks, or substantially similar trade-marks (which were represented to be “Louis Vuitton”); iii. observation of counterfeit jewelry bearing one or more the Louis Vuitton Trade-marks; iv. a purchase of one counterfeit handbag bearing the Burberry trade-marks; v. a purchase of one counterfeit handbag bearing the Louis Vuitton trade-marks and/or trade-marks substantially similar to the Louis Vuitton trade-marks. c.

On January 21, 2010: i. observation of counterfeit and infringing jewelry and purses bearing the Louis Vuitton trade-marks, and/or confusingly similar trade- marks; ii. observation of a counterfeit baseball cap bearing several of the Burberry trade-marks; and

iii. a purchase of a counterfeit necklace bearing one or more of the Louis Vuitton trade-marks. d. On January 29, 2010: i. a purchase of a counterfeit baseball cap (taken from behind the counter) bearing one or more of the Louis Vuitton trade-marks; and ii. a purchase of a counterfeit baseball cap bearing one or more of the Burberry trade-marks. [ 53 ] Prime Time, on several occasions, refused to provide a sales receipt for the counterfeit and infringing items being purchased, and at least one investigator attending “Prime Time” was told that the counterfeit merchandise was hard for Prime Time to come by.

While the business license for Prime Time is owned by a different individual than the Singga defendants, Ko represented such location as Singga’s warehouse in Alberta. Further, Prime Time was offering for sale and selling products similar to products observed at, and purchased from, the Singga warehouse, evidencing the more than likely supply of counterfeit merchandise to Prime Time from Singga.

Activities of the Altec Defendants [ 54 ] Since at least as early as August 2009, the Altec defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton items in Canada, and specifically counterfeit and infringing handbags, sunglasses, watches, key chains, wallets, necklaces, belts, hair clips, bracelets and earrings, including some bearing unauthorized reproductions of the Louis Vuitton copyrighted works.

Further, since at least that time, the Altec defendants have knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Burberry items in Canada, and specifically counterfeit and infringing handbags, wallets, scarves, hair accessories, apparel and watches. [ 55 ] Such activities of the Altec defendants have been carried out over a sustained period of time (and continue to the present), with full knowledge of the plaintiffs’ respective rights in and to the Louis Vuitton and Burberry trade-marks and the Louis Vuitton copyrighted works.

Their activities are large in scale, involving the manufacture and importation of bulk quantities of counterfeit and/or infringing items, and Canada-wide distribution, offer for sale and sale of such items. [ 56 ] As noted above, an investigator from Price-Langevin & Associates Inc. went to the 2009 Alberta Gift Show in Edmonton on August 18, 2009.

In addition to attending Singga’s booth, the investigator also attended a booth listed as “Altec Productions” offering for sale counterfeit purses bearing one or more of the Louis Vuitton trade-marks and counterfeit purses bearing one or more of the Burberry trade-marks. [ 57 ] In November 2009, Altec Productions was again brought to the attention of the plaintiffs when, as outlined above, the defendant Ko referred the IPSA investigator to a “friend” in Toronto to fill an order for 50 “Louis Vuitton” and 50 “Burberry” handbags.

As a result of such referral, on November 12, 2009, the IPSA investigator was contacted by phone by M. Mac from “Altec Productions” (Altec), and then received an e-mail from M. Mac on November 13, 2009 indicating Altec’s Web site of <www.altecproductions.com/main.html>. M.

Mac advised the investigator by phone that she would be able to fill the order requested of Singga, but that the product would cost more because Altec would be paying a commission on the order to Ko. [ 58 ] On December 8 and 9, 2009, through several telephone conversations, the IPSA investigator placed an order of 25 “Super A LV” handbags, in various styles. Inquiries were also made at the time about placing an order of 25 “Burberry” handbags. During the ordering process, M. Mac advised that the investigator could simply go to the “LV Web site” and tell her the model name for ordering. M.

Mac also advised that the product would be coming from their factory in China, and that her partner “Gordon”, in China, would be contacting the investigator with the tracking number. During one of the telephone conversations, M. Mac assured the investigator that the shipment would not be searched by customs, and that they “have done it many times”, implying that the shipment would get through customs. [ 59 ] On December 11, 2009, an investigator employed by Eagle Investigations posed as an assistant to the IPSA investigator, and attended the Altec warehouse to pay for the order of “Louis Vuitton” merchandise.

The Eagle investigator met with Liang and R. Mac at the Altec warehouse, and paid Altec for 25 units of “Louis Vuitton” handbags, at a price of $2 500 total. [ 60 ] At the December 11, 2009 attendance at the Altec warehouse by the Eagle investigator, the IPSA investigator was contacted by phone and discussed with Liang about “Burberry” samples; the Eagle investigator was then shown a handbag bearing one or more of the Burberry trade-marks and was also advised by Liang that Altec could provide exact replicas of “Burberry” handbags .

The Eagle investigator was also given a sample counterfeit handbag bearing one or more of the Burberry trade-marks. On December 14, 2009, the IPSA investigator followed up with Liang about the “Burberry” product, and was advised that M. Mac was in China ordering the “Burberry” product.

The investigator confirmed that “regular quality” rather than “triple A” would be fine for such “Burberry” product. [ 61 ] During the December 11, 2009 attendance at the Altec warehouse, Liang represented Altec as the main source for these types of counterfeit goods, and that Altec attended gift shows in Alberta, Toronto and Vancouver. Liang was interested in starting a “supplier to supplier business” with the investigators. Liang advised that for larger quantities, the items would be sent over a period of time in smaller shipments to avoid being detected by customs.

Liang also recommended that the investigator continue selling higher-end quality items, rather than cheap “knock-offs”, as such higher-end products appealed to wealthier clients and brought in more money. [ 62 ] In early January 2010, the Altec defendants shipped 25 counterfeit handbags bearing the Louis Vuitton trade-marks, and some with the Louis Vuitton copyrighted works, to the investigators. [ 63 ] On January 12, 2010, M.

Mac sent an unsolicited e-mail to the investigator offering for sale various apparently counterfeit items including both “LV” (“awesome quality”) and “Burberry” items. [ 64 ] On February 7, 2010, the Eagle investigator again attended the Altec warehouse (at its new location at Unit 16–300 Don Park Road, Markham, Ontario), and was shown several styles of counterfeit handbags bearing one or more of the Burberry trade-marks, which were represented by Liang as being “A standard” quality.

Liang proceeded to sell the investigator 25 counterfeit handbags bearing one or more of the Burberry trade-marks, at a cost of $750.

[ 65 ] Liang advised the investigator that another shipment would be arriving at the end of February, and then again at the beginning of March. Liang provided the investigator with a copy of the catalogue of goods sold by Altec, which included the offer for sale of numerous counterfeit and/or infringing items. [ 66 ] As noted previously, Ko received a commission for the above-noted substantial sales of counterfeit items by Altec. [ 67 ] On April 7, 2010, the IPSA investigator again contacted Liang, asking to purchase “Louis Vuitton” and “Burberry” product from Altec.

Liang requested that the investigator review Altec’s Web site at <altecproductions.com> and order product listed there. On April 14, 2010, an order was placed for two wallets bearing several of the Louis Vuitton trade-marks and one of the Louis Vuitton copyrighted works, and one handbag bearing several of the Burberry trade-marks. Such counterfeit items were shipped to the investigator by Liang on April 15, 2010. [ 68 ] Altec’s distribution of counterfeit items was and is widespread.

For example, a third party confirmed that it inadvertently purchased several counterfeit handbags bearing one or more of the Burberry trade-marks from Altec, through M. Mac, at the Alberta Gift Show in February 2010.

Altec also represented on several occasions that its distribution was cross-Canada. [ 69 ] Throughout the above-noted investigations conducted into the activities of the Altec defendants, the Altec defendants offered for sale and sold counterfeit and/or infringing Louis Vuitton items (including bearing the Louis Vuitton copyrighted works) and counterfeit and/or infringing Burberry items through their Web site at <altecproductions.com>, with the plaintiffs having evidence of the following instances of such offers for sale: a. for Louis Vuitton, on November 13, 2009, January 25 and 26, 2010, March 26, 2010 and July 14, 2010; and b. for Burberry, on November 13, 2009, January 20 and 29, 2010, March 25, 2010 and July 14, 2010. [ 70 ] The WHOIS information from July 2010 for <altecproductions.com> shows Altec as the registrant and Chan as the administrative contact for the domain name. [ 71 ] Subsequent to commencement of these proceedings, Altec registered a new domain name and began offering for sale and selling counterfeit and/or infringing Louis Vuitton items (including bearing the Louis Vuitton copyrighted works) and counterfeit and/or infringing Burberry items through their new Web site at <aporder.com>, with the plaintiffs having evidence of such offers for sale on September 20, 2010 and December 8 and 9, 2010 (as well as January 11, 2011 and February 2011). [ 72 ] The domain name <aporder.com> was registered, under an anonymous registrant host, and on September 14, 2010, a short time after being served with the statement of claim on this proceeding, the Altec defendants sent e-mails to existing clients advising of their Web site <aporder.com>.

As late as December 7, 2010, Altec continued to direct customers to the Web site, which was said to have “new merchandise”. [ 73 ] Subsequent investigations of Altec’s activities were carried out in late September and early October 2010 by another investigator employed by IPSA International. Liang originally advised he could sell “Louis Vuitton” and “Burberry” “knock-offs”, quoting a price and directing the investigator to Altec’s new Web site at <aporder.com> for product offerings.

Liang advised the investigator that he supplied approximately five dollar stores in Calgary, who are all very happy with the product. [ 74 ] In a telephone conversation of October 5, 2010, Liang advised he could deliver two “Louis Vuitton” products to the investigator within a week. In subsequent telephone conversations, when the investigator pushed for making the payment by money transfer, Liang advised that Altec only accepted credit cards and then said that they no longer had “Louis Vuitton” or “Burberry” in stock.

He later admitted that perhaps in a couple of months or six months they would have the product in. [ 75 ] Notwithstanding these representations by Liang (and his suggestion during such conversations that their Web site had simply not been updated), the Altec defendants’ continued and are continuing to offer for sale counterfeit and/or infringing items through their Web site at <aporder.com> (which had not been operational prior to commencement of this proceeding), with additional counterfeit and infringing items being added to the Web site since September 2010 (clearly evidencing updating of the Web site) and with clients continuing to be referred to such website. [ 76 ] The plaintiffs have also submitted additional evidence to show the continued offer for sale of counterfeit and/or infringing items, including additional and different items (and infringing additional trade-marks owned by Louis Vuitton), by the Altec defendants, after the plaintiffs’ evidence on this motion was served and filed in December 2010, through their Web site at <aporder.com> on at least January 11, 2011 and in February 2011.

Activities of the Defendant Guo [ 77 ] Since at least as early as January 2009, the defendant Guo, through “Carnation”, has knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Louis Vuitton items in Canada, and specifically counterfeit and infringing handbags, purses, jewelry, dresses, scarves and belts, some of which bear unauthorized reproductions of the Louis Vuitton copyrighted works.

Further, since at least as early as May 2009, the defendant Guo, through Carnation, knowingly and wilfully manufactured, imported, advertised and/or offered for sale and sold counterfeit and/or infringing Burberry items in Canada, and specifically counterfeit and infringing handbags and apparel. [ 78 ] Such activities of Guo have been carried out with full knowledge of the plaintiffs’ respective rights in and to the Louis Vuitton and Burberry trade-marks and the Louis Vuitton copyrighted works.

Her activities have involved the importation of bulk quantities of counterfeit and/or infringing items, involving warehousing and distribution, offer for sale and sale of such items. [ 79 ] On or about January 23, 2009, an individual employed by BCS Investigations attended at Carnation, and observed several fashion accessories, including handbags, sunglasses and belts that bore exact copies of the Louis Vuitton trade-marks and designs

substantially similar to the Louis Vuitton trade-marks, but which were not genuine Louis Vuitton merchandise. Some merchandise in the store was kept in a backroom that was located behind a curtain. [ 80 ] On January 27, 2009, the BCS employee re-attended Carnation, and was shown a small purse, taken from the backroom, that had LV and other of the Louis Vuitton trade-marks on it, as well as observing approximately 20 more items that bore “LV” and other of the Louis Vuitton trade-marks, and a few other items displaying trade-marks substantially similar to the Louis Vuitton trade-marks, none of which were genuine.

The defendant Guo, who identified herself as “Jessie”, was the clerk in the store and confirmed that the handbags were not real. The BCS investigator purchased two counterfeit handbags, one counterfeit change purse and a pair of counterfeit earrings all bearing one or more of the Louis Vuitton trade-marks, including a substantial reproduction of the black multicolour monogram.

Louis Vuitton has confirmed that such products are in fact counterfeit. [ 81 ] On May 25, 2009, the BCS employee again re-attended Carnation, where she observed a sundress, handbags, scarves, belts and jewelry, all bearing one or more of the Louis Vuitton trade-marks, and/or trade-marks substantially similar to the Louis Vuitton trade- marks, none of which appeared to be genuine. At that time, she also observed products bearing one or more of the Burberry trade-marks, which also did not appear to be genuine. [ 82 ] On January 22, 2010, an investigator employed by IPSA International attended Carnation.

Guo, who later identified herself as the owner of the store to the IPSA investigator, took the IPSA investigator into a backroom, where numerous counterfeit handbags bearing one or more of the Louis Vuitton trade-marks and numerous counterfeit handbags bearing one or more of the Burberry trade- marks were observed. Such handbags were not displayed in the public area of the store.

Guo advised the investigator that the handbags in the backroom were generally “AA” quality (other than the “Burberry” handbags), and that she could obtain “triple A” quality handbags on order. [ 83 ] Guo also showed the investigator several pieces of counterfeit jewelry, including jewelry bearing one or more of the Louis Vuitton trade-marks, and two counterfeit handbags bearing the Louis Vuitton copyrighted works from the backroom.

Guo advised the investigator that she knew inventory would be arriving in May, and that she shipped items in large quantities to keep the shipping costs down. [ 84 ] Guo proceeded to sell the investigator four counterfeit handbags and three counterfeit pieces of jewelry, each bearing one or more of the Louis Vuitton trade-marks. [ 85 ] On January 27, 2010, the investigator re-attended at Carnation and was again taken into the backroom, where she was shown two counterfeit handbags bearing one or more of the Burberry trade-marks, which Guo sold to the investigator.

The investigator observed four counterfeit jackets bearing one or more of the Burberry trade-marks offered for sale in the store. [ 86 ] The evidence is inconclusive as to whether there is a business relationship between Carnation and Singga, in terms of the importation and sale of counterfeit and infringing items. Carnation is located in the Kingsway entrance of Unit 101–3373 Kingsway, Burnaby, British Columbia. The Singga warehouse is located directly behind it in the alley off of Kingsway. Both businesses represent themselves as manufacturers and wholesalers.

Further, when BCS investigators attended the Singga warehouse on June 8, 2009, Ko had a shipping box in his office with the name “Carnation Fashion” printed on it. Guo denies that there is any connection and, on the evidence presented, the Court must conclude that there is insufficient evidence to prove such a connection.

Counterfeit/Infringing Nature of Items [ 87 ] Qualified representatives of both Louis Vuitton and Burberry have confirmed that all of the items evidenced by the various investigators’ affidavits, and on the defendants’ various Web sites, are not legitimate Louis Vuitton or Burberry merchandise, and have further confirmed that the defendants, and each of them, are not and have never been authorized by any of the plaintiffs to manufacture, import, distribute, offer for sale, sell or otherwise deal in products bearing the Louis Vuitton trade-marks, the Burberry trade-marks and/or the Louis Vuitton copyrighted works.

The Current Proceedings [ 88 ] This action was commenced by a statement of claim issued on August 5, 2010. On August 17, 2010, the Singga Corporation, Lam, Ko, Guo, M. Mac and Liang were all personally served with the statement of claim. It appears that the defendants M. Mac and Liang provided the statement of claim to the defendants R. Mac and Chan, both of whom have subsequently participated in this proceeding in accordance with subsection 127(2) [as am. by SOR/2010-177, s. 1 of the Federal Courts Rules ]. [ 89 ] Each of the defendants, including R. Mac and Chan, has filed a statement of defence.

The validity of the Louis Vuitton trade- marks, the Burberry trade-marks and the Louis Vuitton copyrighted works is not disputed. [ 90 ] The plaintiffs have served their affidavits of documents on the defendants. The defendants Guo, Singga Corporation, Lam and Ko have served their respective affidavits of documents on the plaintiffs. Since serving of the notice of motion and plaintiffs’ evidence on this motion on the defendants, the Singga defendants have also served supplementary affidavits of documents. Affidavits of documents have not been served on the plaintiffs by any of the defendants M. Mac, Liang, R.

Mac or Chan. STATEMENT OF POINTS IN ISSUE [ 91 ] The plaintiffs submit that the following points are in issue in this application: a. whether, on the evidence before the Court, the Court is satisfied that there is sufficient evidence for adjudication on

summary trial and whether it would not be unjust to decide the issues herein; b. whether the defendants, and each of them, have infringed:

i. the Louis Vuitton trade-marks; ii. the Burberry trade-marks; and/or iii. the Louis Vuitton copyrighted works; c. assuming infringement has been established, whether the plaintiffs should be granted the relief as sought, including: i. injunctive relief against the infringing activity and delivery up or destruction of the infringing products; ii. quantum of damages for infringement of the Louis Vuitton and Burberry trade-marks; iii. quantum of damages for infringement of the Louis Vuitton copyrighted works; iv. punitive and exemplary damages, including quantum thereof; and v. costs of this proceeding.

Summary Trial [92] Rules 213 [as am. by SOR/2009-331, s. 3] and 216 of the Federal Courts Rules provide that a party may apply to the Court forsummary trial judgment in an action for which a defence has been filed but before the time and place for trial have been fixed. [93] Subsection 216(6) provides as follows: 216. … Jugdmentgenerallyor on issue

(6) If the Court is satisfied that there is sufficient evidence for adjudication, regardless of the amounts involved, thecomplexities of the issues and the existence of conflicting evidence, the Court may grant judgment either generally or on anissue, unless the Court is of the opinion that it would be unjust to decide the issues on the motion. [94] The Regulatory Impact Analysis Statement (which can be used in interpreting the purpose and intended application of regulatoryamendments) that accompanied the amendments to current rules 213 and 216, confirms that the

summary trial rules were modelled afterRule 18A of the British Columbia Rules of Court [B.C. Reg. 221/90]. This was done in order to allow the Court to dispose summarily ofactions in a greater range of circumstances than previously allowed under prior Federal Court Rules [SOR/98-106], subsection 216(1),which allowed for

summary judgment only in matters where there was “no genuine issue for trial”, and had been judicially interpreted toprevent

summary judgment where credibility was an issue, where the evidence was conflicting and/or where the outcome of the motionturned on the drawing of inferences. Hence, the British Columbia jurisprudence with respect to Rule 18A is instructive and may bepersuasive in consideration of a motion for

summary trial under rule 216 of the Federal Courts Rules. See Rules Amending the FederalCourts Rules (Summary Judgment and

Summary Trial), SOR/2009-331, Regulatory Impact Analysis Statement, C. Gaz. 2009.II.2603, atpages 2603–2604; and Bristol-Myers Squibb Co. v. Canada (Attorney General), 2005 SCC 26, [2005] 1 S.C.R. 533, at paragraphs 155–157. [95] British Columbia jurisprudence confirms that the onus of proof on a

summary trial application under Rule 18A is the same as attrial, that being that the party asserting the claim or defence must prove it on a balance of probabilities. See Miura v. Miura, , 66 B.C.L.R. (2d) 345 (C.A.), at paragraph 14. [96] Further, the British Columbia Court of Appeal has confirmed that if the judge on a Rule 18A application can find the facts as heor she would upon a trial, the judge should give judgment, unless to do so would be unjust, regardless of complexity or conflictingevidence. In determining whether

summary trial is appropriate, the court should consider factors such as the amount involved, thecomplexity of the matter, its urgency, any prejudice likely to arise by reason of delay, the cost of taking the case forward to aconventional trial in relation to the amount involved, the course of the proceedings and any other matters that arise for consideration. SeeInspiration Management Ltd. v. McDermid St. Lawrence Ltd., , 36 B.C.L.R. (2d) 202 (C.A.), at pages 19, 21–23. [97] The Federal Court has confirmed the application of such British Columbia jurisprudence to the consideration of

summary trialapplications. See Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2010 FC 966, 87 C.P.R. (4th) 412, at paragraph 34. [98] In this case, it is my view that a

summary trial judgment is appropriate, having regard to all of the evidence and jurisprudence.The British Columbia Supreme Court has itself 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 andaffidavits, and relatively large damages awards, thereby confirming the appropriateness of doing so. See Louis Vuitton Malletier S.A. v.486353 B.C. Ltd., 2008 BCSC 799, at paragraphs 42–48. [99] Federal Courts Rules, subsection 216(4) also allows for an adverse inference to be drawn if a party fails to cross-examine on anaffidavit or to file responding or rebuttal evidence on

summary trial. In the present circumstances, none of the defendants have chosen tocross-examine on any of the plaintiffs’ affidavits, nor have any of the defendants filed their own responding or rebuttal evidence. TheCourt, therefore, draws an adverse inference against the defendants with respect to each of the issues outlined herein.

The Defendants Have Infringed the Louis Vuitton and Burberry Trade-marks [100] By virtue of their trade-mark registrations, Louis Vuitton and Burberry, respectively, have the exclusive right to advertise,distribute, offer for sale and sell fashion accessories and other merchandise in association with the Louis Vuitton and Burberry trade-marks in Canada, to preclude others from using the Louis Vuitton and Burberry trade-marks, or any other trade-marks, trade-names,words or designs likely to be confusing therewith and to prevent others from depreciating the value of the goodwill attaching to the LouisVuitton and Burberry trade-marks.

[ 101 ] Further, by virtue of their respective extensive reputations and goodwill in the Louis Vuitton and Burberry trade-marks, Louis Vuitton and Burberry each have the respective right to prevent others from calling public attention to their wares and business in a manner that causes or is likely to cause confusion in Canada between their wares and business and the wares and business of Louis Vuitton and Burberry, passing off their wares as and for those of Louis Vuitton and Burberry, or using a description, in association with fashion accessories and other merchandise, which is false in a material respect and which is of such a nature as to mislead the public as regards to the character, quality and/or composition of such wares.

See Trade-marks Act , R.S.C., 1985, c. T-13, paragraphs 7 ( b ), 7( c ), and 7( d ). [ 102 ] My review of the evidence presented in this motion leads me to conclude that the defendants, through their businesses Singga, Altec and Carnation, have, on many different occasions, and at least during the following periods, imported, advertised, offered for sale and/or sold counterfeit and infringing items bearing the Louis Vuitton trade-marks: a. Singga—from January 2008 to April 2010; b. Altec—from August 2009 to the present; and c.

Carnation—from January 2009 to January 2010. [ 103 ] Further, I find that the defendants, through their businesses Singga, Altec and Carnation, have, on many different occasions, and at least during the following periods, imported, advertised, offered for sale and/or sold counterfeit and infringing items bearing the Burberry trade-marks: a. Singga—from June 2009 to March 2010; b. Altec—from August 2009 to the present; and c.

Carnation—from June 2009 to January 2010. [ 104 ] The evidence is clear that such counterfeit items sold by the defendants, and each of them are not, and have never been, authorized by any of the plaintiffs.

The defendants are not and never have been, authorized by the plaintiffs to manufacture, import, distribute, offer for sale, sell or otherwise deal in any product bearing the Louis Vuitton trade-marks or the Burberry trade-marks. [ 105 ] Given that the items sold by the defendants bear trade-marks identical and/or confusingly similar to the Louis Vuitton and Burberry trade-marks, I also find that the public may be led to believe that the counterfeit merchandise sold by the defendants are authentic Louis Vuitton and Burberry merchandise, or that such items have been authorized, approved or manufactured by the plaintiffs. [ 106 ] The defendants’ use of the Louis Vuitton and Burberry trade-marks, as outlined above, is likely to cause confusion between the defendants’ wares and business and the wares and business of Louis Vuitton and Burberry. [ 107 ] Further, the defendants’ sale of substantially inferior quality counterfeit Louis Vuitton and Burberry merchandise causes serious damage, and indeed irreparable harm, to the reputation and goodwill generated by the superior character and quality of the genuine Louis Vuitton and Burberry products bearing the Louis Vuitton and Burberry trade-marks, respectively. [ 108 ] I find that the activities of each of the defendants are therefore contrary to the following statutory provisions: a.

Section 19 [as am. by S.C. 1993, c. 15, s. 60] of the Trade-marks Act , in that the defendants have infringed the exclusive rights of Louis Vuitton in and to the Louis Vuitton trade-marks and the exclusive rights of Burberry in and to the Burberry trade-marks; b.

Section 20 [as am. by S.C. 1994, c. 47 , s. 196] of the Trade-marks Act , in that the use that the defendants make of the Louis Vuitton trade-marks and Burberry trade-marks is likely to lead the consuming public to believe or infer that the defendants’ wares originate from or are authorized by Louis Vuitton or Burberry, respectively, and is therefore deemed to have infringed Louis Vuitton and Burberry’s exclusive rights in the Louis Vuitton trade-marks and Burberry trade-marks, respectively; c.

Section 22 of the Trade-marks Act , in that the use that the defendants make of the Louis Vuitton trade-marks and Burberry trade-marks is likely to have the effect of depreciating the value of the goodwill attaching thereto; d. Paragraph 7(

b) of the Trade-marks Act , in that the defendants have also called public attention and continue to call public attention to their wares and business in a manner that causes or is likely to cause confusion in Canada between their wares and business and the wares and business of Louis Vuitton and Burberry; e. Paragraph 7(

c) of the Trade-marks Act , in that the defendants have also passed off their wares as and for those of Louis Vuitton and Burberry; and f. Paragraph 7(

d) of the Trade-marks Act , in that the defendants use and continue to use, in association with wares and services, a description which is false in a material respect and is of such a nature as to mislead the public as regards to the character, quality and composition of such wares and services.

The Defendants Have Infringed the Louis Vuitton Copyrighted Works [ 109 ] Louis Vuitton, as the exclusive owner of the copyright in the Louis Vuitton copyrighted works, has the sole right to produce or reproduce the Louis Vuitton copyrighted works, or any substantial part thereof, in any material form whatsoever, and it is an infringement for any other person to make such production or reproduction.

Further, it is an infringement for anyone other than Louis Vuitton to sell, possess for the purposes of selling and importing into Canada for the purpose of selling, a copy of the Louis Vuitton copyrighted works, that such person knew or should have known infringes copyright or would infringe copyright if it had been made in Canada. See Copyright Act , R.S.C., 1985, c. C-42,

section 3 [as am. by S.C. 1988, c. 65 , s. 62; 1993, c. 44, s. 55; 1997, c. 24, s. 3] and

subsection 27(2) [as am. idem, s. 15]. [110] On the evidence presented to me as part of this motion, I find that the defendants, and each of them, through their businessesSingga, Altec and Carnation, have manufactured, imported, possessed (for the purpose of selling) and/or sold merchandise bearing atleast one of the Louis Vuitton copyrighted works. Further, based on their actions and admissions as outlined above, each of thedefendants clearly knew, or should have known, that the items they were selling infringed copyright in the Louis Vuitton copyrightedworks.

None of the defendants are, nor have 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. [111] By virtue of their activities, the defendants are therefore also each in violation of sections 3 and 27 [as am. idem] of the CopyrightAct and have infringed the rights of Louis Vuitton in and to the Louis Vuitton copyrighted works.

Liability for the Various Acts of Infringement Singga [112] I find that the Singga defendants were all clearly involved in the activities of the Singga business, including through the Singgawarehouse and the Web sites operating at <singga.ca> and <singga.com>. While the Singga defendants have in their statements ofdefence denied any involvement of Ko in the Singga business, the evidence clearly shows that Ko is the principal operator of the Singgabusiness, particularly as it relates to the sale of counterfeit and infringing items through such business.

The evidence also shows that Lamis directly involved in the operations of Singga, and also dealt in the supply of counterfeit and infringing goods. [113] Although both Ko and Lam have attempted to hide behind the Singga corporation, stating that all activities being carried out wereby the Singga corporation, a corporation cannot be used to shield an officer, or director, or a principal employee from liability, when thepurpose of such individual was not merely to direct activities of the business in the ordinary course of that individual’s relationship withthe business, but instead, a deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement orreflect an indifference to the risk of it.

See Mentmore Manufacturing Co., Ltd. et al. v. National Merchandising Manufacturing Co.

Inc.et al. (1978), (FCA), 89 D.L.R. (3d) 195 (F.C.A.), at pages 204–205, and Visa International Service Association v.Visa Motel Corporation, carrying on business as Visa Leasing et al. (1983), (BC CA), 1 C.P.R. (3d) 109 at 112(B.C.S.C.), at pages 119–120. [114] The British Columbia Supreme Court has previously held in counterfeiting cases that a corporation will not be allowed to be usedto shield officers, directors and principal employees from their actions in the wilful and knowing sale of counterfeit and infringing goods.See Louis Vuitton Malletier S.A. v. 486353 B.C.

Ltd., 2008 BCSC 799 [cited above], at paragraph 45. I adopt and apply that authority inthis Court. [115] I find that Ko and Lam were both personally involved in the operation of the Singga business. They both engaged in an illegalcourse of conduct, namely manufacturing, importing, distributing, selling and offering for sale counterfeit and/or infringing items, whichis clearly outside the ordinary scope of any legitimate business that would be able to be run by the Singga corporation; Ko and Lam aretherefore liable for the activities taking place through Singga.

Altec [116] I find that the Altec defendants were all clearly involved in the activities of the Altec business, including through the Altecwarehouse and the Web sites operating at <altecproductions.com> and <aporder.com>. [117] The Altec defendants initially operated the Altec business as a partnership, with each of the Altec defendants being personallyinvolved in the manufacture, importation, distribution, sale and/or offer for sale of counterfeit and/or infringing items. [118] While the Altec defendants did form a corporation in July 2010 to carry on the Altec business, this corporation cannot be used toshield any of the Altec defendants from liability for their activities subsequent to such incorporation.

The Altec defendants continue to bepersonally involved in the operation of the Altec business, and each continues to engage in an illegal course of conduct, namelymanufacturing, importing, distributing, selling and offering for sale counterfeit and/or infringing items, which is clearly outside theordinary scope of any legitimate business that would be able to be run by the new corporation. The Altec defendants are therefore liablefor the activities taking place since incorporation, as well as for the activities taking place prior to incorporation.

Altec/Singga Joint Liability [119] I also find that the Singga defendants and the Altec defendants share liability for the activities of the Altec defendants at least inso far as activities where the Singga defendants were paid a commission, as outlined above. Carnation [120] The evidence before me shows that Guo is clearly the principal operator of Carnation, holding both the business name registrationand being the individual personally responsible for the offer for sale and sale of the counterfeit and/or infringing items, as well as theimportation of such goods.

At the hearing of this matter in Vancouver, Guo appeared and did not dispute her liability except in so far asthere was any connection between Carnation and the Singga defendants and/or the Altec defendants. Guo is therefore liable for theactivities taking place at Carnation. Entitlement to the Relief Requested [121]

Section 53.2 [as enacted by S.C. 1993, c. 44, s. 234] of the Trade-marks Act provides that, where a Court is satisfied that any acthas been done contrary to the Trade-marks Act, it may make any order it considers appropriate, including an order providing for relief byway of injunction and the recovery of damages or profits and for the destruction or other disposition of any offending wares, packages,

labels and advertising material and of any dies used in connection therewith. See Trade-marks Act, R.S.C., 1985, c. T-13,

section 53.2. [122] Further,

section 34 [as am. by S.C. 1997, c. 24, s. 20] of the Copyright Act provides that, where cop

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