Written on behalf of Feigenbaum Consulting
A few weeks ago, a popular Vancouver grocery store closed its doors after five years in operation. Ordinarily, this does not make the news. However, the conclusion of the years-long saga of Pirate Joe’s is not an ordinary story.
Pirate Joe’s: Meeting Canadian demand for US products
It seems that everyone, including many Canadians, love Trader Joe’s.
Pirate Joe’s opened in late 2011, a Vancouver-based reseller of Trader Joe’s products. The store was run by a local man who purchased the goods across the border in Washington, employing secret shoppers to buy things on his behalf when he was banned from the stores himself. The products were all legally imported and relabelled to meet Canadian legal requirements, then sold at a markup.
Legal claims against Pirate Joe’s
In 2013, Trader Joe’s sued the Canadian store for trademark infringement, unfair competition, unfair designation of origin, and false advertising. However, the case was dismissed by a US district judge, who held that Trader Joe’s could not prove that Pirate Joe’s, which operated exclusively in Canada, had any impact on its American-based business.
Trader Joe’s appealed, and a ninth circuit appeals court overturned the decision, finding that a Canadian business could still devalue a trademark held only in the United States. The case was all set to go to trial in November of this year, but high legal fees and the prospect of more lengthy litigation led to the owner of Pirate Joe’s settling the case.
The settlement terms are confidential, but apparently include the condition that Pirate Joe’s be closed for good.
Canadian legal advice for United States trademark and copyright concerns
The impact of the ninth circuit decision is significant for US trademark holders. It confirms that trademark owners can sue foreign entities in US courts for actions that occurred in other countries, including any alleged, “damage to reputation.”
As specialists in US and cross-border law, the team at Feigenbaum tax law can advise businesses about any potential US trademark, copyright and intellectual property concerns. To make an appointment with a member of your team, contact us online, or call our office toll free at (877) 275-479.