What to Consider When Hiring a Foreign Private Investigator for Foreign IP Litigation Support

By guest blogger Mark Kusic, President, Founder and Private Investigator, Kusic and Kusic Private Investigators Ltd., Vancouver, British Columbia, Canada.

Obtaining a foreign private investigator (PI) can have a significant impact in foreign intellectual property (IP) litigation. A good and experienced foreign PI understands how to collect evidence in a way that is legally relevant and admissible in the country they are located. The recent Canadian trademark counterfeiting case Guccio Gucci S.p.A. v. Mazzei, [2012] F.C. 404 (Can.) illustrates this point. The famous Italian fashion designer Gucci investigated and brought suit against a Toronto-based seller of counterfeit Gucci products. As a part of their investigative efforts, Gucci worked with three Canadian investigators to investigate and collect evidence on the seller. Initially, one PI working undercover responded to the seller’s online advertisement and set up a meeting with the seller where the investigator purchased the seller’s counterfeit Gucci goods.

Next, a second undercover investigator responded to the seller’s online advertisement and scheduled a time to meet the seller at his storage facility. Once at the facility, the investigator witnessed and was able to video record hundreds of counterfeit items, as well as purchase counterfeit Gucci and other luxury brand products.

Lastly, a third investigator accompanied an attorney and a police detective to the seller’s storage facility and served the seller a cease and desist letter. During the process, the investigator saw and discretely recorded the interaction, which also included evidence of a number of counterfeit Gucci products.

Based on these investigations, the team of Canadian investigators was able to assist Gucci in documenting the existence and sale of the seller’s counterfeit Gucci goods, ultimately helping Gucci obtain a summary judgment ruling and compensatory damages for each count of trademark infringement.

So how can IP owners ensure that a foreign PI they hire will be as effective as those hired by Gucci in Guccio Gucci S.p.A? Well, there are few things IP owners should look for when hiring a foreign PI, as well as things to keep in mind once a foreign PI is hired.

Experience. IP owners should make sure that the foreign PI they hire has extensive IP investigation experience. There are several ways to verify such experience. First, an IP owner can check the PI’s online presence by reviewing the PI’s website, and searching their name online in conjunction with terms such as “anti-counterfeiting” and “brand protection” to obtain further information about the PI’s IP investigation experience. They can also check to see if the PI firm is accredited and licensed by regional, national or international PI associations that handle IP investigations (see next point).

It is also good to ensure that a foreign PI has extensive online investigation experience if that is to be the focus of the IP investigation. The foreign PI needs to be able to expertly navigate and research the Internet including websites where potential foreign infringers and counterfeiters are active, such as on Alibaba, Craigslist, Facebook and eBay, among others. As each website and online marketplace has their own rules and processes for handling IP violations, IP owners with a specific website concern should inquire whether the foreign PI they wish to hire has in-depth experience with the particular website in question in order to determine whether the foreign PI can be of assistance.

Licensing. IP owners should make sure the foreign PI they wish to hire is licensed and accredited with governing authorities and industry associations, both regionally, nationally and (preferably) internationally. Any foreign PI firm chosen should be a member of their regional and national professional association, such as the Private Investigators’ Association of British Columbia and the Canadian Association of Private Investigators in the case of my firm respectively. Although not required, a foreign PI firm’s membership with a recognized international investigator association such as the World Association of Detectives and the International Trademark Association (INTA) further solidifies their credentials.

Know Your Ethical and Legal Obligations. IP owners also need to be aware of their legal and ethical obligations once they hire a foreign PI. They should not direct their foreign PI to access information that is not available to the general public, misrepresent themselves, or conduct other illegal practices. Any evidence gathered by a foreign PI under these circumstances is likely inadmissible, and may even result in legal action taken by the subject of the foreign investigation.

Parting Notes. Obtaining a good and experienced foreign PI can significantly benefit a IP owner’s foreign IP litigation efforts. Following these suggestions can help to ensure that the right foreign PI is chosen and effectively utilized.

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