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The U.S. Court of Appeals for the Eleventh Circuit recently issued an interesting opinion that addresses the issue of whether trademarks can be reproduced without permission in artistic works. In The University of Alabama Board of Trustees v. New Life Art, Inc. & Daniel A. Moore, the University of Alabama sued a well known artist who had built his career around paintings featuring the University’s famous Crimson Tide football team. The paintings inevitably feature a number of the University’s trademarks, including logos on helmets and jerseys and the team’s signature colours. The well-known artist sold not only his paintings, but also prints, calendars, mugs and other items featuring reproductions of his works.

Moore painted football scenes from 1979 to 1990 without entering into any kind of agreement with the University of Alabama. In the period between 1991 and 1999 he entered into several different licence agreements for the production and marketing of specific items that would feature both his artistic works and additional University of Alabama trademarks. These products would bear markings indicating they were “official” merchandise, and proceeds of sale were shared with the university. During this period Moore continued to create paintings independent of any licence agreement. The university never asked him to pay royalties or otherwise seek permission for the sale of any paintings or prints of his work.

In 2002, the University changed its position with respect to Moore’s work, and informed him that he would need a licence for any University of Alabama-related works that featured University trademarks. Moore disagreed and did not seek licences for his paintings and prints. The University bookstore sold unlicensed calendars featuring Moore’s work during this period. It also had several of Moore’s unlicensed paintings hanging at different locations on campus. The disagreement eventually blossomed into litigation; the University sued Moore for violating their trademark rights in his paintings, prints, calendars, mugs and other items. At trial, the judge ruled that use of trademarks in the paintings and prints was protected by the First Amendment (freedom of speech), but that the reproduction of these same paintings on other merchandise fell outside the scope of the First Amendment and would likely infringe the trademarks by causing consumer confusion.

The Court of Appeals ruled that the inclusion of the University’s trademarks in the paintings, prints and calendars was indeed protected by the First Amendment. The Court stated: “we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act with respect to the paintings, prints, and calendars.” The Court rejected the University’s arguments that the paintings, prints and calendars represented commercial speech, and were therefore entitled to a lower level of constitutional protection. According to the Court, the fact that the items were sold for money did not render them commercial speech. The Court ruled that trademark rights should be construed narrowly in the context of artistic works. It ruled that “[t]he depiction of the University’s uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniform’s colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history.”

Unfortunately, Moore did not appeal the decision of the lower court that the paintings on the mugs and other items (including t-shirts, towels and so on) fell outside first amendment protection. Instead, he argued that the University, through its conduct had acquiesced to the sale of this merchandise. The issue was remanded to the district court for further consideration. It would certainly have been interesting to have a ruling on the issue of whether a trademark owner could place limits on the right of an artist to sell copies of works featuring trademarks through a broad range of merchandising opportunities.

Although similar questions have not yet been raised in Canadian courts, the issues are important here as well. In 2007, the federal government enacted special legislation to give enhanced protection to Olympic and Paralympic trademarks. When concerns were raised about the impact the law might have on the freedom of expression of artists who might create works incorporating these well known marks, Parliament amended the law to include the following exception:


3(6) For greater certainty, the inclusion of an Olympic or Paralympic mark or a translation of it in any language in an artistic work, within the meaning of the Copyright Act, by the author of that work, is not in itself a use in connection with a business if the work is not reproduced on a commercial scale. [my emphasis]


The expression “for greater certainty” suggests that the provision is simply clarifying the law rather than creating a new exception. While the provision makes it clear that the protected trademarks may be incorporated into artistic works, those works only qualify for the exception if they are “not reproduced on a commercial scale.” This is a rather tricky phrase. It is not at all clear what the reproduction of an artistic work on a commercial scale would entail. A single painting offered for sale might be acceptable, but a numbered series of prints might not. Further, it might not be permissible for an artist to licence multiple unnumbered prints, or to publish his or her work in a calendar. While all of these uses of an artistic work would appear to be protected by the First Amendment in the United States, the Olympic and Paralympic Marks Act seems to codify a narrower scope for artistic expression. The question of mugs, t-shirts and other items featuring the artistic work is entirely unresolved.

Canadian courts have tended to take a narrow view of freedom of expression issues in intellectual property law. The Moore case in the United States is provocative for challenging the balance between the expressive rights of an artist whose work incorporates the trademarks of others and the rights of the trademark holder. It remains to be seen how a Canadian court will approach such a balancing act, and how, in consequence it might interpret such an ambiguous provision as s. 3(6) of the Olympic and Paralympic Marks Act.


Published in Trademarks

A recent decision of the Federal Court has caused a small stir over language that, taken at face value, would have a dramatic impact on trademark law in Canada. In Homeaway.com, Inc. v. Hrdlicka, Justice Hughes considered an application to have the respondents registered trademark VRBO, for vacation real estate listing services, expunged from the register. The applicant was the owner of the U.S. based website VRBO.com, which offers vacation real estate listings on a worldwide basis. The applicant argued that the respondent’s trademark registration was invalid as Hrdlicka was not the person entitled to register the mark in Canada.


The person entitled to register a trademark in Canada is the one who has first used it or made it known in this country. The “making known” provision of the Trade-marks Act is designed to protect well-known foreign trademarks from being registered by Canadian businesses with the likely consequence of creating confusion among Canadian consumers already familiar with the foreign mark. Unfortunately, as Justice Hughes noted in his decision, the “making known” provisions were drafted in the technological dark ages and specifically refer to marks that have been made known through the print or broadcast media. Notwithstanding this, there is still hope for a foreign trademark owner that has actually used its trademark in Canada; if they were the first to use the mark in this country, then they are the party entitled to register it.


The Trade-marks Act contains a definition of “use” that varies depending on whether the mark is registered for wares or services. In this case, the VRBO mark related to services. For a mark to be used in relation to services, it must be “used or displayed in the performance or advertising of those services.” (s. 4(2)) The VRBO mark appears on the VRBO website and in its URL. However, the case law also makes it clear that for there to be use in Canada, it is not sufficient for there to be advertising featuring the mark in Canada, the services must also be offered in Canada.


This is where the decision of the Federal Court has caused confusion and controversy. In discussing “use”, Justice Hughes makes the apparently bold statement that “a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-marks Act purposes, use and advertising in Canada.” (at para 22) On the one hand, the statement offers nothing particularly surprising – it is not controversial to find that use on a website can constitute “advertising” for the purposes of determining use in relation to services under s. 4(2). However, the statement falls short in that it fails to clarify that this finding is limited to use in relation to services; a mark being featured on a web site is, on its own, not a use in relation to wares. Further, the statement appears to conflate the issue of whether featuring a mark on a website is advertising with the broader issue of whether a trademark has been used in Canada. As noted earlier, the person entitled to register the mark is the person who has first used the mark in Canada, and the case law is clear that for this to happen the services in question must not just be advertised in Canada – they must also be offered in Canada.


Although the statement taken at face value is controversial, the decision in the case is not particularly troubling. Indeed, Justice Hughes is aware of the importance of the services being offered in Canada, even though he does not refer to the relevant case law. He finds that HomeAway not only advertised its services in Canada, it entered into contracts with Canadians to list their vacation properties, and the site was used by Canadians to find vacation rental properties. It is just unfortunate that the rather elliptical way in which the decision was framed can lead to the impression that a trademark will be considered to be “used” in Canada simply by virtue of the fact that it can be seen on websites accessible to Canadians over the Internet. This is certainly not true in the case of wares, and is only true, in the case of services, if the services are also genuinely available to Canadians.

Published in Trademarks

A foodie furore has erupted in Ottawa over the decision of Service Ontario to cancel the registration of the name “Union Local 613” for an Ottawa restaurant. The popular and well-reviewed restaurant has been in operation since July 2012 and its website indicates that the name was chosen to reflect a “Brotherhood of Cookers, Eaters & Drinkers”. The number 613 is the area code for the Ottawa region.

The decision by Service Ontario was made under the Business Names Act, which provides, in section 4(7) that the registrar of business names may cancel a registration where the name “does not comply with the prescribed requirements” of the legislation. These requirements are set out in the Restrictions Respecting Names. Article 4(7) of the regulations states that “A name shown in a registration must not use a word or expression that would suggest that the registrant is a form of organization that the registrant is not.” Clearly, the concern of the Registrar is that the reference to a union local might suggest to the public that the restaurant is run by or affiliated with a union. The owners of the restaurant have a right to appeal the decision of the Registrar to the Divisional Court.

The wording of the regulation is such that it is triggered where a name “would suggest” a different form of organization. This is not a confusion standard – the issue is not whether there is a likelihood that the public would be confused or misled into thinking that the restaurant is somehow associated with a particular union. Clearly, the uproar in the blogosphere regarding the province’s decision would suggest that actual and prospective patrons of this popular eatery are not at all confused. The restaurant’s website gives prominent place to its slogan “Brotherhood of Cookers, Eaters & Drinkers”, and for those who visit the restaurant or its website, the risk of confusion seems small. Yet with a much lower threshold for rejecting the name in the regulations – a mere suggestion – the chances of success on appeal may be small.

The principle served by article 4(7) is a legitimate one. To allow names that might lead members of the public to think they were dealing with charities, unions, non-profits, or other types of organizations when in fact they are not, could put the public at risk of potentially harmful deception. Yet in this case, any “suggestion” that the restaurant is somehow union affiliated seems utterly remote since the kinds of services offered by unions to their membership typically do not involve food. One cannot help but feel sympathy for the restaurant owners who have already built considerable goodwill in a name that was chosen specifically to evoke a spirit of foodie solidarity in the Ottawa region.


NOTE: October 25, 2012 - It is reported in the news that Service Ontario has decided to allow Union Local 613 to keep their name. Apparently, the fact that the name had initially been registered, and that the restaurant had already acquired substantial goodwill under that name, prompted a reconsideration. The media attention to the issue probably also played a role.


Published in Trademarks

I recently blogged for FreeSpeechDebate.Org about free speech, ambush marketing and the London Olympics. The posting is available here:


Published in Ambush Marketing

Insurance Corp. of British Columbia v. Stainton Ventures Ltd. is a recent decision of the British Columbia Supreme Court that addresses the issue of the use of trademarks in domain names. The plaintiff in the case, the Insurance Corp. of British Columbia (ICBC) objected to the use by the defendant Stainton Ventures Ltd. of its ICBC mark in its domain names, on its website, and on a booklet which it produced for sale. The defendant, through its website and booklet, offered advice on how to deal with B.C.’s motor vehicle insurer.

The defendant’s website was initially established in 2006 with the URLs <fightICBC.ca> and <fightICBC.com>. The site provided information about dealing with ICBC, and also listed the names and contact information of health care professionals. At the time, ICBC contacted the listed health care professionals and drew their attention to the listings. The defendant received feedback from a number of these professionals, who apparently objected to the rather adversarial domain name of the website. It subsequently changed its business cards, website references and other materials to ICBCadvice, and registered the new domain names of <icbcadvice.ca> and <icbcadvice.com>. In 2008, it began offering for sale from its website a publication titled ICBC Claim Guide.

In 2009 the defendant received its first cease and desist letter regarding the use of the ICBC acronym. Justice Grauer of the B.C. Supreme Court noted that although it was only in 2008 that there was an actual commercial offering from the site, it was clear from the outset that the site had served a marketing function for the defendant’s law practice. After receipt of the cease and desist letter, the title of the claim guide was changed to ICBCadvice Claim Guide. No other concessions were made by the defendant.

The plaintiff applied by way of summary trial for declarations that the defendant was infringing its rights in its official mark ICBC, that it was passing off its wares and services as those of ICBC, and that it was in violation of s. 52 of the Competition Act for having made false or misleading representations. The court ruled against ICBC on all counts.

The first issue was whether the defendant had infringed the plaintiff’s rights in ICBC’s official mark “ICBC”. Section 11 of the Trade-marks Act provides that “No person shall use in connection with a business, as a trade-mark or otherwise, any mark adopted contrary to section 9 or 10 of this Act....” Section 9(i)(n)(iii) prohibits the adoption of a mark “in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for” an official mark. Justice Grauer rejected the plaintiff’s argument that the defendant’s mark was identical to its ICBC mark because it reproduced the ICBC mark. Instead, he chose to consider whether “ICBCadvice” so nearly resembles “ICBC” as to likely be mistaken for it. Justice Grauer was persuaded by the defendant’s argument that there was no evidence of confusion on the part of visitors to the website. He noted: “The evidence just does not support the contention that through its domain names, the defendant either intended or accomplished the redirection to its site of traffic looking for ICBC’s own website...” (at para 25). Further, he found that drivers in B.C., who were very familiar with the ICBC mark, would not likely be confused into thinking that the ICBCadvice domain names were linked to the official mark. He concluded that “they would take it as identifying the subject-matter of the site, not whose site it is” (at para 26). However Justice Grauer does not consider whether consumers would be likely to think that the subject matter of the site (advice about ICBC) emanated from the insurance company itself, as opposed to some other party. In fact, the official ICBC site also provides advice to customers on how to proceed with making a claim.

Justice Grauer noted that he also would not have found the “fighticbc” domain names to be infringing. There would seem to be at least an argument that “fighticbc” is much less likely to be confusing than “icbcadvice”, since ICBC is less likely to advocate fighting itself than it might be to provide advice to motorists on how to proceed with a claim. The discussion in this respect is unsatisfying. While most domain name cases seem to reject domain names for critical websites that merely use the unmodified trademark of the target company, there is still a lack of clarity as to what kind of modifying language will suffice to make it clear that the site to which the domain name resolves is not that of the target company. In addition, the case law around domain names and critical sites usually involves non-commercial criticism or protest sites; the impact of the commercial dimensions of the defendant’s site in this case is not fully discussed. While I do not necessarily disagree with the outcome of this case, it would have been helpful to have a closer consideration of these key issues.

Justice Grauer did find that the original version of the defendant’s commercial claim guide violated s. 11 of the Trade-marks Act. Its cover featured ICBC in large type with “Claim Guide” below in a much smaller font. However, the revised cover, which reads “ICBCadvice Claim Guide” passed muster. He made an order restraining the distribution of the original guide, but not the revised version.

Justice Grauer dismissed the passing off arguments relating to the website and the domain names. Although it was clear that ICBC had goodwill in its mark, he found that the “ordinary average automobile insurance customer” would not be confused into believing there was a business connection between the defendant’s website and the complainant. Once again, his analysis seems to focus almost exclusively on the issue of actual confusion. He wrote: “I cannot see how an average customer would be deceived into thinking that the website is somehow associated with or approved by ICBC. There is no evidence of either actual confusion or likelihood of confusion, and as noted, a likelihood of confusion is not so obvious that evidence is unnecessary” (at para 44). He rejected the plaintiff’s argument that search engines would turn up the defendant’s site in any search using the term “ICBC”. He wrote: “The behaviour of search engines is not, in my view, evidence of anything other than the operation of an algorithm, and search-engine marketing. It is certainly not evidence of confusion” (at para 46). He went on to ask: “Is the public so naive as to assume that every hit returned to a search for “ICBC” is somehow associated with or endorsed by the Insurance Company of British Columbia? I suspect that the Industrial and Commercial Bank of China would be rather distressed if that proved to be so” (at para 46). In his view, “the average customer of normal intelligence would not be led astray, and would have no difficulty recognizing that ICBCadvice.com would probably relate to how to deal with ICBC in an arm’s length or even adversarial sense, rather than in a manner endorsed by ICBC” (at para 48). Justice Grauer also quickly dismissed the claims of false and misleading representations under the Competition Act.

Published in Blog

The Quebec Court of Appeal has overturned the decision of Justice Zerbisias of the Quebec Superior Court to award $125,000 in extra-judicial costs and punitive damages against a company that lost a trademark infringement suit.

Les Industries Lassonde is the owner of the registered trademarks OASIS and associated marks that feature the word OASIS, for juices, drinks and sherbets. In 2009 they brought a trademark infringement suit against L’Oasis d’Olivia Inc., arguing that the defendant’s mark OLIVIA’S OASIS for body care products was confusing with their OASIS marks. After a five-day hearing, Justice Zerbisias found that there was no likelihood of confusion, nor was there any depreciation of the goodwill associated with the plaintiffs’ mark. She concluded that “to impute the likelihood of confusion between Plaintiff’s and Defendant’s mark to the average consumer would insult him or her by assuming that such consumer is completely devoid of intelligence; of normal powers of observation, recollection and recognition; or, is so totally unaware or uninformed as to the environment in which they are found, that they would be easily deceived about the origin or nature of the wares they purchase.” (at para. 52)

At the end of the trial, counsel for the defendant made an oral motion seeking extra judicial costs and punitive damages against the plaintiffs. They relied upon provisions in the Quebec Code of Civil Procedure that came into effect on June 4, 2009. The Bill which added these provisions was titled “An Act to amend the Code of Civil Procedure to prevent improper use of the courts and promote freedom of expression and citizen participation in public debate.” (S.Q. 2009, c-12) In short, these provisions are a kind of anti-SLAPP legislation. Strategic Lawsuits Against Public Participation (SLAPP) are typically baseless law suits that have as their goal the intimidation of those who are critical of or who oppose certain types of activity. The intimidation is chiefly economic; the cost of defending against a SLAPP suit can be devastating for most individuals or public interest groups.

In this case, the defendant argued that the plaintiffs had “engaged in manifestly unfounded, frivolous, vexations proceedings, excessive and unreasonable in the circumstances, in an attempt to bully it and to prevent it from the lawful exercise of its rights to use its trade-mark and to engage in business under the name of Olivia’s Oasis” (at para 56). Justice Zerbisias agreed. In a very blunt assessment of the conduct of the plaintiffs she found that they had “unnecessarily pursued a claim they knew or should have known would not succeed” (at para 63). She based this conclusion on the sharp differences between the parties’ wares and target clientele, and on the fact that there had been no evidence of any confusion over the 5-year period of concurrent use of the parties’ trademarks. She found as well that the plaintiffs knew that the word OASIS was not a strong mark, and that there were many other registered trademarks incorporating that word, as well as many other businesses in Canada that used the word as part of their business name. Justice Zerbisias noted the disparity in power and resources between the parties, and referred to the plaintiffs’ conduct as “menacing and abusive”.

The plaintiffs did not appeal the judge’s finding of lack of confusion; instead, they confined their appeal to arguing that the award of extra-judicial costs and punitive damages was not justified on the facts, and that even if it was, the calculation of the amount of extra-judicial costs was not based on any evidence and was therefore flawed. In its decision on March 30, 2012, the Court of Appeal agreed on both points. The most significant finding, of course, is that the conduct of the plaintiffs did not amount to the kind of abuse contemplated by articles 54.1 and 54.4 of the Code of Civil Procedure. The Court began by noting that there was nothing in the actual conduct of proceedings that was abusive. The defendant’s argument depended instead on a finding that the proceedings should not have been brought in the first place. In contrast to the trial judge, however, the Court of Appeal found nothing to suggest that the commencement of proceedings was inappropriate. They noted that there was nothing inherently excessive about seeking to enforce one’s trademark rights. Once the plaintiffs had concluded that there was a risk of confusion created by the defendant’s mark, the plaintiffs were within their rights both to oppose its registration and to sue for trademark infringement. The Court noted that this was not simply the normal practice in such situations; it was almost an obligation in order to protect one’s trademark rights.

The Court of Appeal was also unprepared to find that the action commenced by the plaintiffs was doomed to fail from the outset. They noted that the trial judge spent 50 paragraphs of her decision discussing the issue of confusion following a five-day trial and a long period of deliberation. They observed as well that good faith must be presumed, and bad faith must be proven. They found no evidence to support the conclusion that the plaintiffs were motivated by bad faith. While the trial judge had found that other suits brought by the plaintiffs against other holders of marks for vastly different wares or services that incorporated the word “oasis” was evidence of a pattern of conduct, the Court of Appeal refused to draw an inference that this was evidence of harassment of any and all who might use the word “oasis” in relation to a business. They noted that a different inference could well be made: that the plaintiffs sought to protect the distinctiveness of their trademark. The Court indicated that much more evidence would need to be provided to support a finding of bad faith.

The case raises interesting issues about what might constitute sufficient proof of bad faith to give the anti-SLAPP provisions any application in the trademark context. It is certainly the practice for trademark owners to vigorously defend the distinctiveness of their marks; loss of distinctiveness is fatal for a trademark. The kind of disparity in economic power in this case is not unusual in a context where a new entrant in the market place has adopted a trademark that an established company might see as encroaching upon their existing trademark rights. The assessment of confusion requires a fact-driven, contextual analysis; it is not something that is always apparent on the face of things.

Perhaps the anti-SLAPP provisions might have a greater role to play when there is better evidence either that the rights being asserted are dubious, or that they are being asserted in a vexatious manner. This might occur where the proceedings themselves are conducted in an abusive manner, or where there is evidence of the bad faith assertion of trademark rights that goes beyond the normal practice of protecting one’s interests. It might also occur in circumstances where the plaintiff has no valid cause of action. For example, the non-commercial, critical use of a trademark seems to fall outside the scope of the legislation (although such a use of a design mark might infringe copyright, which raises a different set of issues). Such a case would also raise the freedom of expression issues which seem to be identified as central to the bill which brought about the amendments to the Code of Civil Procedure.

Published in Trademarks
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