At in Vancouver BC, Michael Hallatt resells marked-up and unmodified Trader Joe’s products purchased at retail price in Washington State Trader Joe’s locations. Currently, Trader Joe’s only operates in the United States and hold several registered trade-marks on . The mark is used to identify both the company itself, and its branded goods. Trader Joe’s also currently has two ��for retail grocery services in Canada.

In the��, Trader Joe’s alleged that Hallatt prominently displayed their mark in an attempt to pass as an authorized dealer of their products. Interestingly, in the wake of the trade-mark infringement claim made by Trader Joe’s, Hallat’s store now goes by _IRATE JOE’S with the tagline “Unauthorized, Unaffiliated and Unafraid”. On October 2^nd, a Seattle Washington court����the claim for lack of subject-matter jurisdiction, but allowed Trader Joe's to amend the claim under state laws.

Under Rule of the United States��Federal Rules of Civil Procedure,��a court can ��only if it is immaterial and appears to be made solely for the purpose of obtaining jurisdiction, or the claim is wholly immaterial or frivolous. In making this determination, the court unless the party mounting a jurisdictional challenge asserts facial or factual attacks on the claims. The court held that Hallatt failed to make a factual or facial attack but that nevertheless there was no basis for extra-territorial application of the ��in this case.

The Lanham Act confers broad power on the court to exert jurisdiction. To make this determination, courts must apply the .�� First, courts ask whether the actions complained of effect American foreign commerce. Second, whether this effect presents a cognizable injury under the Lanham Act. Third, the court must conduct a seven-factor analysis as to whether assertion of extra territorial authority is justifiable. To satisfy the first two parts of the test, a plaintiff must show only that there has been “some” effect on foreign commerce when construing all facts in their most favourable interpretation. In this case, all the alleged trade-mark infringement took place in Canada and there was no proof of economic harm in the United States.

Trader Joe’s failed to show an effect on American commerce that would warrant the application of the Lanham Act. ��The degree of conflict with foreign law or policy weighed against establishing jurisdiction because Trader Joe’s has two trade-mark applications in Canada and the infringement is wholly foreign. Hallatt’s permanent resident alien status and his frequent purchase trips to the US would likely be sufficient for establishing jurisdiction through the nationality factor. Third, Hallatt’s presence is not strong enough in the US to apply jurisdiction. Fourth, as wholly foreign acts, there was not a significant effect in the United States. (Even if there was some diversion of business or impact on the reputation of Trader Joe's, this factor still weighed against applying jurisdiction.) Fifth, Pirate Joe’s�� clearly purchased Trader Joe’s products at retail value to resell and it was unclear whether this was intended to harm Trader Joe's since it did not actually lose sales. As a result, it was was not necessarily foreseeable under the sixth factor that the actions would cause harm. Finally, the actions were clearly more significant in Canada than in the United States, since that is where the products were sold after being lawfully purchased in the US.��The court found that on the whole the seven factors supported not extending jurisdiction.

Until Trader Joe’s actually enters into the Canadian market they may have a difficult time preventing Hallat from selling their products at Pirate Joe's. To be successful in a claim in a Canadian court, Trader Joe’s would have to show actual use of the mark in Canada. Trader Joe's may have an argument that if their mark is displayed on a website accessed by Canadians it should be considered “used”��, though this has been a controversial point of law in recent times. (It is important to note that a mark displayed on a website is not�� “used” in Canada unless Canadians can����associated with the mark.) Currently, Trader Joe’s does not allow Canadians to purchase goods through their site and therefore may not pass the threshold for use in Canada. As time goes on, even with trade-mark applications, if the mark is not used ��in Canada the registration could be expunged. Moreover, with Pirate Joe's tagline "Unauthorized, Unaffiliated and Unafraid", I think it would be difficult to indicate consumer confusion in the face of such clear indications about the lack of association with Trader Joe's.

Despite the favourable ruling, Hallatt may still have difficulty stocking his shelves. Several Trader Joe's locations now , and Hallatt has already had to resort to sending others in to shop for him. ��That said, for the time being, fans of Pirate Joe’s can continue to sing “Yo ho ho and a bottle of all-natural apple juice!”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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Briefly, TPB is a Swedish website that hosts links to provide its users access to millions of ��that allow the uploading and downloading of copyrighted software, films, music, and other forms of media. According to the Internet traffic ranker , it is the 80^th most popular website in the world. By comparison, Netflix is the 96^th��most popular website and New 91��ɫ Times is 112^th). The site’s overwhelming popularity has not gone unnoticed – with governments and companies across the world (, , , , , , , , , , and the pressured heavily by media corporations to shut down or limit access to the site.

Thus, we arrive at the High Court ruling that the UK’s ISPs must block TPB’s IP address – a block that encompasses approximately 19 million users, representing 94% of��. The reasoning behind this decision was centered on section 97A of the , which states, “The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.” Furthermore, the court ruled, there was no question that the Defendants (ISPs) satisfied the definition of service providers, that the users and operators of TPB use the Defendants’ services to infringe copyright, and that the Defendants have actual knowledge of this infringement.

There is little issue with the reasoning behind the High Court’s decision; however, the legislation itself raises questions. In my opinion, there are two issues with the legislation. The first issue is a jurisdictional problem. TPB is a website whose servers are , and is granted network connectivity through a Swedish company, Serious Tubes Network. Thus, British companies are being held responsible for content over which they wield no control because it is��created by foreign companies. By requiring British ISPs to block such IP addresses, the courts are effectively limiting the companies’ consumer bases. This intervention in restricting which services these commercial entities are allowed to provide is unwarranted; since the goal of these companies is to provide access to the Internet, not monitor its content.

The second issue with the legislation is that it is difficult to logically assign fault to the ISP – for it is neither responsible for hosting, nor downloading the content. Rather, it is the hosting company that simply enables the Internet user to perform the actual acts of hosting and downloading pirated content. While the ISP is the easiest target, ease of accusation does not translate to culpability. It is one thing to its users’ actions on the Internet, but an entirely different and unjustified matter to hold them responsible for the actions of their users.

As an aside, while the IP block comes as the court’s latest method of restricting access, TPB has a reputation of circumventing both restrictions and attempts to physically shut down its servers with astonishing ease and efficiency. In response to the UK IP address ban, of its website with a new IP address that is unblocked from the aforementioned ISPs, thus allowing UK users full access to its site.

In a move that almost mocks international authorities’ attempts to bring down their servers, to use GPS-controlled, low-orbit aircraft containing microcomputers to store and transmit it server data. In doing so, TPB would severely complicate efforts to locate and shut down their servers. Perhaps it truly lives up to its reputation as “the world’s most resilient BitTorrent site”.

Byron Tse is a JD Candidate at Western University, Faculty of Law.

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