Lorne Lipkus, co-founder of Canadian firm Lipkus Law, outlines the key trends impacting anti-counterfeiting practitioners and some of the industry’s recent successes in clamping down on counterfeit goods. This interview is part of a series of Q&As with the authors and editors of Global Legal Post’s Law Over Borders comparative guides. Lipkus is the editor of the Anti-counterfeiting guide.
 
What are the top three trends impacting anti-counterfeiting at the moment?
 
“The top three trends that we’ve noticed over the last year and more are live sales, sales through home businesses and social media sales. Live sales are creating a bit of havoc in the anti-counterfeiting space because a purchaser must be on a seller’s customer list to take part and they’re very careful about who can join their list. Very often they’re receiving a counterfeit shipment on one day, they send out a quick notice to all of their customers and then the sale can take place within 24 hours. You have to pick up the goods very quickly, and if they don’t know you, they may not even go and meet you. It’s all done to avoid detection. Home business sales also make detection very difficult. Because it’s in a residential setting, if you’re trying to do surveillance or make buys, it’s more difficult because if you knock on that door, unless you have an appointment, they’re not going to let you in. Social media sales are also difficult to catch because, for example, they won’t necessarily let you follow them.”
 
How are law firms innovating around anti-counterfeiting measures?
 
“Bringing in in-house investigators. Through their work we’re able to determine whether there’s a good case or not to pursue, and they do that through open source intelligence, which is just another name for an online investigation.”
 
What have been some of the most key recent successes in anti-counterfeiting enforcement?
 
“One of the greatest areas of success for anti-counterfeiting in Canada that we’ve had in the past few years is the success of the RFA – Request for Assistance – programme with our customs service (CBSA). Those laws came into effect in 2015, but over the first five years it would be generous to say there were 50 to 75 cases in total across Canada, which is such an insignificant number, considering in the US they have over 30,000 seizures a year. But in the last two years, our office alone has had between 600 and 800 cases, so that’s a huge increase. It's still nothing close to what it should be, but we’re getting there slowly. If we receive a notification from customs and the client intends to pursue, then we receive live information about the importer and exporter – and it’s live because the counterfeiter doesn’t know at this point that their goods have been detained. There have been several occasions where we’ve been able to share that information with our client, who have been able to get their anti-counterfeiting team to take down the warehouse that was responsible in a matter of days.”

What new regulations are on the horizon that could impact businesses and lawyers practicing in this area?
 
“There are pushes, especially in Canada, to create more consistent remedies. In the US, for example, they have statutory damages that are regularly applied. When you say to a counterfeiter, we’ve given you notice, you’ve continued to do it, so you’re going to pay the following penalty and we’re going to go after you and the courts will make you pay, that is a great deterrent. Whereas you have jurisdictions like Canada, which for trademark laws, doesn’t even have statutory damages. And even in copyright laws, where we do have statutory damages, the judge has such a wide discretion that sometimes the penalties are so low that you can’t even really call them statutory damages.”

The Law Over Borders Anti-counterfeiting guide provides answers and insight into how businesses can protect their brands from counterfeiting and the grey market in key jurisdictions around the world. Click here to read the guide online.

Get to know Lorne…
 
What was the last thing you read or watched that had a significant impact on you and why?

“It was a poem by Joann Snow Duncan called Two Mothers Remembered. One was the mother that the poet had throughout her life and the second mother was the same physical person who now had dementia, and no longer recognised her or remembered her, but was still her mother. That affected me because my own mother has dementia. Her dementia has not reached the stage where she doesn’t recognise me, but I know that one day, that will change too. And I constantly think of that poem and how it’s so important to make sure that you don’t waste the time you have with your loved ones.”
 
If you weren’t practicing law, what would you be doing?

“I would volunteer my time at a hardware store that did home improvement work. And I would greet customers who had a do-it-yourself project but didn’t know how to do it, and I would do everything I could to make sure that they knew what the best tools were for them to use, how to do it and really try to give them some confidence that it’s worth being a do-it-yourselfer.”
 

What one bit of life advice would you like to go back and give to your 18-year-old self?

“Take the time to do the job to the best of your ability no matter what it is. Because whatever you do in your life, it will affect you forever.”