The Federal Court decision in Thoi Bao Inc. v. 1913075 Ontario Limited involved a former employee of the plaintiff developing and operating a competing online news website that infringed on the plaintiff’s trade-marks and copyrighted content.
The plaintiff, Thoi Bao, is a well-known Vietnamese language news company that provides news services throughout Canada in a variety of formats including newspapers, radio, television and online. The company’s website, www.thoibao.com, provides online content such as news, editorials, opinions, links to other news agency services, self-produced television shows and newscasts.
The former employee registered the domain name, www. thoibaotv.com, without the knowledge or consent of the plaintiff and began offering online news services in Canada in the Vietnamese language. The former employee did not appear to make any effort to conceal his activities because the infringing website prominently used TBTV Online as the website title, streamed webcasts that were produced by the plaintiff, and incorporated the plaintiff’s trade-marks in its meta tags and throughout its source code. Unsurprisingly, the Court did not have any difficulty finding the former employee was liable for trade-mark and copyright infringement, passing off and depreciation of goodwill. The Court awarded damages in the amount of $25,000 and a permanent injunction against passing off its website as the plaintiff’s in any way including by using the plaintiff’s trade-marks in its “meta tags (or other internet search engines, optimization tools or devices)”.
What was somewhat surprising was that the Court ordered the former employee to transfer ownership and control of not just the infringing domain name but also all social media accounts (such as Facebook and Twitter) containing the plaintiff’s trade-marks or any other confusingly similar trade-marks. We are not aware of any other trade-mark and copyright infringement decisions in Canada where this remedy was granted. Considering the growing influence and value of social media marketing nowadays, it is important for businesses and intellectual property owners to be aware that it is possible to obtain an order for the transfer of control over all social media accounts containing their trade-marks to prevent any further infringing activity and damage to the goodwill of the business.