Area of Law: Private Investigation
Answer # 998
Intellectual property investigationsRegion: Ontario Answer # 998
What is intellectual property?
Intellectual property (IP) is the end product of human creativity and expression. Music, writing, paintings, computer software, inventions, industrial processes, and many other original creative endeavours can be intellectual property.
In Canada, IP law recognizes that original creators in our society should have special rights. For instance, they should be compensated for use of their IP, or have the authority to stop others from using or selling their invention or work. The growing use of technologies, such as the Internet, have increased the danger that IP rights will be violated or abused. A licensed private investigator can help with these types of investigations.
Unlike almost any other type of property, IP is:
- Often expensive to develop
- Easily copied or distributed to an infinite number
Among the most common types of protection for IP are patents, trademarks, copyrights, and industrial designs.
Why are IP investigations conducted?
An intellectual property investigation could involve:
- copyright abuse
- patent infringement
- unauthorized use of trademarks
- trade secret breaches
- data breaches & IP leaks
- product copying and brand imitation
An investigation will look at many individuals to find who is responsible for the violation, including trademark owners and copyright users, inventors, and even former employees.
Who might initiate an IP investigation?
A patent, copyright, trademark, and other types of intellectual property can be a very valuable asset. Many groups of individuals and businesses have a vested interest in the security and protection of their intellectual property assets, including:
- film producers and distributors,
- entertainment gaming studios,
- software publishers,
- literary publishers and creators,
- musical producers, songwriters and performers, and
- both small businesses and large corporations.
Someone else may be either threatening to copy their products or steal their ideas, or may already be doing so.
In Canada, the Canadian Intellectual Property Office (CIPO) of Innovation, Science and Economic Development Canada, is responsible for the administration and processing of patents, copyrights, trademarks, and other types of IP. CIPO, however, is not responsible for policing the use of IP. Consequently, CIPO will not prevent other people from infringing on your IP rights. It is up to the IP owner to ensure that no one else uses it. Therefore, IP owners and creators must often go to court to enforce their rights.
In order to discover important information, private investigators are often hired to gather evidence. An investigator may work in collaboration with, or be hired by, a lawyer or law firm representing the IP owner, to detect infringement and identify who is responsible. Often, the information collected by an investigator is used as evidence in cases that end up in court proceedings. In fact, most cases of IP infringement are heard in the Federal Court of Canada, which has the authority to grant orders that are enforceable nationally.
Courts can order several remedies, such as:
- An injunction, which prohibits someone from doing something. Although dependent on the exact wording of the judgment, in the case of an IP injunction, this would mean that the person or organization against whom the ruling is made is no longer allowed to use the IP, sell it, distribute it, or in any way say it is their creation.
- Damages, to compensate for losses resulting from the IP infringement.
- Punitive damages, (rarely awarded), are ordered to punish the offender for conduct that was malicious, and high-handed and offends the court’s sense of decency.
Infringement, Counterfeiting and Piracy Investigations
The two most common types of IP investigations are (1) IP Infringement, and (2) Counterfeit and Piracy investigations.
1. IP infringement investigations
What is IP infringement?
IP Infringement refers to the illegal use of a trademark, patent, copyright or other type of IP.
Patent infringement occurs when someone makes, uses, or sells a patented invention without the permission of the owner. Generally speaking, for a patent infringement to occur, someone must make, use, or sell the invention in a country where the inventor holds a patent, without the direct or indirect permission of the owner.
Trademark infringement occurs when someone uses a trademark without the permission of the owner.
Copyright infringement occurs when someone copies work, or performs or displays a work in public, without the permission of the owner. One common example of copyright infringement is plagiarism, which involves copying someone else’s work and claiming that it is your own.
2. Counterfeiting and piracy investigations
Another common type of intellectual property investigation involves counterfeiting and piracy of products. The Canadian Anti-Counterfeiting Network defines counterfeiting and piracy as the unauthorized knock-off of legitimate products. Counterfeiting generally refers to cases of trademark infringement, while “piracy” refers to copyright infringement.
Piracy often involves illegally downloading music but can also include movies, TV shows, or other copyrighted work available online.
Licensed products that are often counterfeited and sold, include:
- fashion accessories, such as purses and wallets,
- electronics, such as chargers, cell phones and MP3 players,
- everyday personal products, such as shampoo and toothpaste,
- sporting goods,
- trading cards,
- medications, and
- licensed paraphernalia.
Often, counterfeit products pose many health and safety risks, for example toxic ingredients in counterfeit medications, or children’s clothing that is not fire retardant. They can also result in job losses and non-payment of taxes. According to the RCMP, counterfeit products have even been linked to funding organized crime and terrorist groups. For these reasons and others, these types of investigations are taken very seriously. They are often done as a collaboration between investigators, lawyers, law enforcement authorities, and brand owners, and often end up in court.
What investigative techniques are used?
During an IP investigation, the investigator will utilize many research tools and techniques. They may:
- perform background and financial investigations on individuals and businesses involved in the infringement
- survey known geographical areas for trademark infringement and counterfeit goods
- use digital forensic techniques and intricate web search capabilities to identify who is responsible for the infringement
- preserve data and devices of possible suspects
- conduct covert or ‘undercover’ investigations to obtain product samples and photographic evidence of suspect products or service mark infringements, and identify manufacturers and distributors suspected of infringing materials
- obtain witness testimony
- use surveillance on relevant individuals and locations
- conduct thorough research into a client’s patent or trademark to seek out any competing products
- investigate any employees who have either left the company or have access to the intellectual property
- monitor competitors and their licensees, distributors, and importers
- catalogue and document seized products to ensure proper “chain of custody” to ensure evidence may be used in court
In addition to the above techniques, since counterfeited and pirated products are often sold online, such as fake medications and luxury items, an investigator investigating suspected counterfeiting may:
- monitor online auction websites for counterfeit products,
- locate and search multiple websites and domain names, and
- conduct supply chain investigations to find the sellers, manufacturers, distributors, packagers, and any others involved.
Note that as long as there is no intent to distribute the items, possession of counterfeit or pirated items is not a criminal offence in Canada.
For legal advice or assistance, contact a lawyer.
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