Canadian Smoke Shop Owner Demonstrates How To Turn Trademark Infringement Into Jail Time

from the LIFEHACK dept

Lots of brands seem to feel trademark infringement should be greeted with the full brunt force of the law -- even though it's rarely anything more than a civil offense. Counterfeited goods are their own issue, with Good Guy ICE on hand to run interference for major studios, the NFL and anyone else with a significant amount of lobbying power. Counterfeiters can end up in jail, but entities that do nothing more than use a trademarked name/logo without permission or in a "confusing" fashion? Not so much.

There are exceptions, of course. And caveats. But that's exactly what happened in Canada. Jail time for trademark infringement. Richard Stobbe of IPblog.ca has more details.

Imprisonment in intellectual property infringement cases is rare - although not unheard of. The message from a recent Canadian Federal Court decision is… don’t mess with the Court. They expect compliance with their orders and a contempt order can lead to a “warrant of committal”, resulting in imprisonment.
So, it wasn't exactly jail time for trademark infringement. And it happened in Canada. But the circumstances leading to the perpetrator's jailing contained plenty of infringement. Losing the lawsuit apparently had no deterrent effect on the defendant's activities, which went on completely uninterrupted after the judgment was handed down.
In 2013, a Federal Court ruled that Hightimes Smokeshop and its officer and director, Ameen Muhammad had infringed the “HIGH TIMES” trademark owned by Trans-High Corporation (See: Trans-High Corporation v Hightimes Smokeshop and Gifts Inc., 2013 FC 1190 (CanLII)). In spite of this judgment, the judgement was ignored, and trademark infringement continued on the shop signage, sales receipts and printed materials of Hightimes Smokeshop.
Two years later, Muhammad pleaded guilty to several counts of contempt for violating the order. He was also fined $62,500. The contempt order issued by the court along with this new judgment was also ignored. This forced the court to assume its final (incensed and irate) form. Muhammad is headed to jail.
A warrant of committal shall be issued for Ameen Muhammad a.k.a. Ameen Mohammad, who shall be arrested and imprisoned for a period of not less than 14 days and remain imprisoned until the full amounts of all fines, costs, and other amounts owing under the Contempt Order and the judgment of Justice Manson dated November 26, 2013 have been paid.
So, someone can go to jail for trademark infringement, but only if they're willing to get sued, lose the lawsuit, pretend the lawsuit never happened and ignore successively more severe orders from the court. It may also help to be Canadian, but one can imagine the same result could be achieved in the US with the right amount of sticktoitiveness.


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  • icon
    WysiWyg (profile), 3 Mar 2016 @ 1:35am

    Life in prison then?

    What if he can't pay his debts? It's not like he's gonna earn all that much in prison right?

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 3 Mar 2016 @ 5:17am

      Re: Life in prison then?

      indiegogo?

      reply to this | link to this | view in chronology ]

    • identicon
      Jake, 3 Mar 2016 @ 6:45am

      Re: Life in prison then?

      Most courts will take your ability to pay into account when setting fines and other damages (I don't know about Canada but that's actually required by law in Britain) and allow you to pay in installments or impose community service in lieu. I get the impression this guy was simply ignoring the issue and hoping it would go away.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 3 Mar 2016 @ 10:28am

        Re: Re: Life in prison then?

        Yep. It sounds an awful lot like he just ignored the order, then ignored the fines. If he had made some effort to pay, (or, you know, even stop infringing the trademark) nothing much would have come of it. At some point, the court should step in and toss 'em in the clink, and this guy earned it.

        As to the original complaint, considering "High Times" is a publication related to pot, and he was selling paraphernalia, I think it's fair to say he was trying to create brand confusion. If I didn't know what I do from this article, I would assume his shop was affiliated with the publication, so I think High Times was COMPLETELY in the right here.

        reply to this | link to this | view in chronology ]

    • icon
      Ninja (profile), 3 Mar 2016 @ 8:19am

      Re: Life in prison then?

      Orange is the New Black: Bad Boys.

      reply to this | link to this | view in chronology ]

  • identicon
    Wendy Cockcroft, 3 Mar 2016 @ 5:58am

    While jailing for contempt of court is a reasonable way to get the man's attention, I'm alarmed at the thought of holding him till his debt is paid. I thought we'd finished with imprisoning debtors.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 Mar 2016 @ 7:58am

    ...but one can imagine the same result could be achieved in the US...

    Both OSHA and IRS have regulations that will consider a civil infraction willful if it's repeated. The first (and sometimes second) identical infraction is a civil matter. But once the willful tag is hung on the complaint the regulations allow it to be treated as a criminal complaint. There's likely other agencies with similar regulations.

    reply to this | link to this | view in chronology ]

  • identicon
    Ralphh, 3 Mar 2016 @ 8:57am

    Not So High

    Trans High [HIGHTIMES] are NOT AS HIGH as they might lead everyone to believe with their STONED trademark. Otherwise they would have visited this guy, sat down and smoked a joint or two with him and offered him a license deal. GET REAL

    reply to this | link to this | view in chronology ]

  • icon
    John85851 (profile), 3 Mar 2016 @ 10:00am

    The title of the article is misleading

    The title of the article is a little misleading: the guy wasn't jailed for infringement, even though that's how the case started- he was jailed for disobeying a judge and contempt of court.

    And, yes, debtor prisons are very real, especially if someone gets caught up in the cycle of not being able to pay to fine, which leads to more fines, which leads to jail time. The Atlantic had a great story about this:
    http://www.theatlantic.com/business/archive/2016/02/debtors-prison/462378/

    reply to this | link to this | view in chronology ]

  • identicon
    Michael J. McFadden, 3 Mar 2016 @ 10:01am

    Good to hear the news!

    At last! The Antismokers are going to jail for their Joe Chemo and Meltboro Man cartoons! Not only clear trademark infringement, but infringement done with full, considered, foreknowledgeable attempt to do serious harm!

    Any idea how many years they'll get? Decades?

    Or are the Antismoking Gods above the law?

    :?
    MJM

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 3 Mar 2016 @ 11:35am

      Re: Good to hear the news!

      Are antismokers attempting to sell anticigarettes and antiparaphenalia via brand confusion?

      Trademark law is about trade; nobody confuses political satire (which is protected speech) with a product.

      Nice try :)

      reply to this | link to this | view in chronology ]


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