In a Canadian intellectual property first, the Federal Court has ordered a defendant to transfer control of social media accounts to an IP owner following a successful infringement lawsuit.
Thoi Bao Inc. v. 1913075 Ontario Ltd involved the actions of a former employee of the plaintiff Thoi Bao Inc., a Vietnamese-language digital and print media company. The former employee and the corporation he controlled operated a website which illegally reproduced copyrighted content from Thoi Bao’s website, and which used online features (including a domain name and several social media accounts) that were very similar to Thoi Bao’s trade-marks. The Federal Court had no difficulty finding that these acts constituted both copyright and trademark infringement and that the defendants had no viable justification or defence for their conduct. Thus far, the case was entirely unexceptional.
However, the remedies granted by the Court were strikingly innovative. In early 2016, we had previously reported that the Federal Court made its first order transferring a domain name as a remedy for IP infringement. In the Thoi Bao case, the Federal Court went even further, and ordered the defendant to transfer not only its infringing domain names, but also its social media credentials. Specifically, the Court ordered the defendant to provide the plaintiff with ownership and control over all social media accounts “registered to or in the control of [the defendant] containing [the plaintiff’s trade-marks] or any confusingly-similar trade-mark.” In each case, it was clear that the social media accounts appeared to be used solely to direct Internet users to the infringing website that was the subject of the lawsuit.
The Thoi Bao case is an important one for IP owners, since it confirms their ability to prevent infringement by seizing control of the means used to commit internet IP piracy. Going forward, IP owners enforcing their rights against online infringers should consider seeking an order that the defendant deliver up control of social media accounts that were used in the pursuit of the infringing behaviour complained of. Like the order sought in Thoi Bao, this request should normally list the social media platforms on which the infringer is known to be active, and end with a residual clause mentioning “any other social media service” in case the defendant has social media accounts which are not known to the IP owner. Of course, it remains to be seen how courts will define the contours of “social media services” in the event of a dispute over the scope of such an order (for example, do blogs or podcasts qualify as “social media accounts” as that phrase is currently used?).
An order transferring control of social media accounts represents a powerful remedy for IP owners. It not only puts a stop to the activities of the particular defendant, but also ensures that the same social media accounts cannot subsequently be used by other infringers. Additionally, it ensures that these social media accounts are placed under the control of the IP owner, who can then begin using them for legitimate marketing and promotional purposes. Should you have further questions about obtaining such relief from the Federal Court, please contact the author of this bulletin.