Teresa Scassa - Blog

Tuesday, 18 February 2014 14:52

Ambush Marketing and the Olympics

With the winter Olympics now getting massive media attention, it is perhaps worth pausing to think about that other, non-official Olympic activity – ambush marketing. Indeed a recent threat of litigation by the Canadian Olympic Committee against North Face for ambush marketing is an indicator that the Olympic marketing games are also in full swing.

Like many other major sporting events, the Olympics have become heavily dependent on funding raised through sponsorship programs. The International Olympic Committee (IOC), in fact, has a carefully structured sponsorship program called TOP, which manages Olympic marketing opportunities. Sponsors pay substantial sums of money for the rights to use certain Olympic symbols in tightly controlled ways. What a sponsor is paying for is the right to associate their own brand with the brand values of the Olympics.

The Olympic logos and symbols, used by the Olympic organizers and licensed for use to sponsors, are protected by trademark or Olympic-related legislation. Any company that uses these marks without permission infringes upon these trademark rights. Ambush marketing is a term used to describe marketing practices which attempt to create an association with a major event without the ambushing company having paid for sponsorship rights. However, what distinguishes it from simple trademark infringement is the fact that ambush marketers generally do not use the trademarks of the event organizers. Instead, ambush marketers create associations through more oblique references to the event itself.

The huge amounts of money involved in the organization of major events, and in paying for sponsorships, have led organizations like the IOC to push for legislation to protect specifically against ambush marketing. In fact, it is now no longer possible to succeed in a bid to host the Olympics without a promise to enact anti-ambush marketing legislation. Canada did so for the Vancouver 2010 Olympic Games. Section 4 of the Olympic and Paralympic Marks Act specifically created a “right of association” and two Schedules to the legislation set out lists of common words that might be considered to trigger an illegal association. These words included: gold, silver, bronze, winter, 2010, twenty-ten, Whistler, Vancouver, and Games.

Anti-ambush marketing legislation is controversial. Some of this controversy is discussed by Benoit Séguin and me in a recent article on the subject. (The article is published in a new book titled Intellectual Property for the 21st Century: Interdisciplinary Approaches). It is not clear, for example, that ambush marketing legislation is truly necessary – beyond serving as a ‘comfort blanket’ for event sponsors. Concerns have also been raised that by attempting to outlaw “associations”, such legislation is unduly broad and vague. It also goes far beyond preventing major competitors of event sponsors from launching ambush marketing campaigns leading up to and during the event. For example, such legislation generally applies equally to all businesses, large or small, even if no one would expect a small local business to be a major event sponsor. Such laws limit the ability of small businesses to make even indirect reference to a major event taking place within their own community. This would seem to be a significant – and rather disproportionate -- limitation on freedom of expression. Further, such legislation privileges event organizers over all other stakeholders. Many athletes or national sporting organizations have their own commercial sponsors – indeed, athletes might be unable to train or compete without such sponsors, and national sporting organizations would not be in a position to develop young talent without commercial sponsorship. Yet when an athlete competes in the Olympics, their own commercial sponsors are limited in the extent to which they can celebrate their sponsored athlete’s achievement without running afoul of anti-ambush marketing laws. In another article, my co-authors and I also raise the issue of whether anti-ambush-marketing legislation might actually allow large corporations to put their legal teams to work to exploit loopholes in the legislation, with the result that major competitors of event sponsors are able to launch challenge-proof ambushes, while ‘associations’ created by small and medium businesses lacking the same resources are suppressed by the law.

Part of the problem with anti-ambush marketing laws is that there is a very broad range of conduct that can fall within the ambit of an “association” with an event. Some activity is clearly more problematic than others. In the case of North Face, it would appear that the company launched a new line of red and white, maple leaf flag-emblazoned sportswear in the lead up to the Sochi Games. Although no Olympic logos were used on the clothing, some items apparently featured dates linked to the Games and some promotional materials may have made direct reference to Sochi. The collection was initially called “village wear” and is now referred to as the “international collection”. The characters RU14 also appeared on some items. NorthFace is not, of course, an Olympic sponsor. The matter may never head to court – if it did, it might provide an opportunity for the courts to explore some of the challenging legal questions around the limits of legal protection against ambush marketing.

Published in Ambush Marketing

A terrific collection of papers that I had the pleasure of editing along with Mistrale Goudreau, Courtney Doagoo and Madelaine Saginur, titled Intellectual Property Law for the 21st Century: Interdisciplinary Approaches, has just been published by Irwin Law. The book is available for sale from Irwin as an eBook or in paperback format. It is also published under a Creative Commons Licence, and individual chapters can be downloaded here.

This book flows from a workshop we hosted at the University of Ottawa. Our goal was to bring together Canadian academics interested in interdisciplinary approaches to IP law. Participants were from many different disciplines, including law, English, cultural studies, music, library and information studies, criminology, political science, and sports management. The papers cover a broad range of IP subject matter, including copyright, trademark and patent law, as well as laws restricting ambush marketing, and personality rights.

The collection of papers pushes us to think about the importance of interdisciplinary perspectives and approaches in a context where intellectual property law is no longer simply a matter of commercial relationships, but also trenches deeply on issues of economics, culture, health, innovation, creativity, and intellectual freedom. Some of the papers use insights from other disciplines to examine how the law should be interpreted and applied (in the context of copyright infringement analysis in music or film, for example), others bring to bear the theories of methodologies of other disciplines to elucidate the historical evolution of certain IP rights, or the political discourse surrounding IP law and its reform. There is truly an immense breadth of content here, from a discussion of evidentiary problems in business method patent litigation to the impact of commercialization approaches to scientific research on academic scientists. Check out the table of contents to get a sense of the full range of topics.

Published in Copyright Law
Wednesday, 30 October 2013 14:26

Geographical indication protection in CETA

The new Canada-Europe Trade Agreement (CETA) is poised to expand the protection available to European geographical indications in Canada. Currently, under the Trade-marks Act, protection is available only to a limited number of geographical indications used in relation to various wines and spirits. CETA will expand not only the number of protected geographical indications; it will also enlarge the categories of protected indications to cover a broad range of agricultural products such as cheese, meat, olives, and vinegars.

A geographical indication (GI) is, in essence, a word or combination of words that indicates the geographical point of origin of a particular product in circumstances where that geographical origin gives the product distinct qualities or characteristics. These characteristics may be due to features that are particular to that region (a certain soil type or climate, for example) in combination with social factors (a particular tradition of production developed through a long history). Europe, of course, with its many long-standing local traditions and customs relating to food and wine, is the source of many classic and sought after products that North American producers have been happy to imitate and to sell using the same name to identify the type of product.

Because the text of CETA has not been made public, it is possible only to rely upon the short snippets of information that have been provided to the public regarding the scope of this agreement. It is not clear, therefore, whether the provisions regarding geographical indications will have a prospective effect only (permitting existing producers of products labelled as, for example, FETA or ASIAGO, to continue with their usage of these terms), or whether it will apply to all producers. It may be that it will not apply to those who have acquired actual trademark rights in a particular word or combination of words, but that it will apply to those who have merely used the geographic descriptors in labelling their products. Some reports indicate that descriptors will still be permitted with modifiers. Thus, instead of referring to one’s product as ‘Feta cheese’, it might be necessary to refer to it as Feta-type cheese, or Feta-style. While the details will obviously determine the full impact of CETA, it is without doubt that this agreement will affect Canadian producers, who have already expressed concerns over how the increased protection of geographical indications will impact the marketing of their products.

Relative to Europe, Canada is largely new to the development of long-standing traditions of regional agricultural production of distinctive products. Where this has occurred, the geographical designations for these products may be protected using certification marks. Certification marks are trademarks that can be applied to categories of products or services that are distinctive by virtue of the character or quality of the product, the methods of production, the production by a certain category of people, or by geographic place of origin. The owner of a certification mark is not a producer, but is rather an organization that is responsible for licensing the use of the mark by those who meet the criteria established as part of the registration of the mark. Canada’s First Nations, which have many distinctive traditions that are tied to territory, not simply around food but also around textiles and artisanal works, have begun to explore the use of certification marks to identify the authenticity of their products in the face of multiple imitators (consider the registered certification mark for COWICHAN in relation to clothing). Nevertheless, while certification marks offer some protection, they are different from GIs in important ways. In the first place, once protected, a GI becomes a prohibited mark: a GI, or a mark closely resembling it, cannot be adopted, used or registered as a trademark by anyone not entitled to its use. Further, this protection is at the state level: the registrar of trademarks maintains a list of protected GIs, and these GIs are extended comparable protection in other countries through the vehicle of trade agreements. By contrast, an organization that applies for a certification mark must comply with the rules regarding the registration and maintenance of trademark rights. The protection of the mark is generally only against the adoption by another of a mark that would cause confusion with the certification mark. Finally, a certification mark will only be protected in those countries in which the organization has itself sought to register the mark; in attempting to do so, the organization may run up against pre-existing confusingly similar marks in another country, and may find itself without the protection it seeks. It is clear that the potential for the use of protected geographical indications on behalf of Canadian producers remains underdeveloped in Canada. The expanded protection of geographical indications in CETA is, by all accounts, a one-way street.

The CETA will include a list of protected geographical indications as negotiated by the parties. This list is expected to include GIs such as Grana Padano, Roquefort, Feta, Asiago, and Prosciutto di Parma (and many more). It is reported that there will also be a mechanism that will permit other GIs to be added to the list on an ongoing basis.

Published in Trademarks
Wednesday, 25 September 2013 13:02

"Redskins" Trademarks in Canada

Last week, the CBC reported that an amateur football club in Nepean, Ontario, reached the decision to change its name following a spate of negative publicity that enveloped it after it was revealed that a human rights complaint had been filed in relation to its name. The Nepean Redskins had used this name for their club since 1981. The organization's jerseys, helmets and website also feature the same Indian-head logo as the U.S.-based Washington Redskins NFL team.

In the United States, the Washington Redskins have long faced challenges to the validity of their registered trademarks under section 2(a) of the Lanham Act. This provision bars from registration any mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Although these challenges have not been successful to date for mainly procedural reasons, they are ongoing. In fact, arguments in a new challenge were heard in March of 2013, and the decision in this matter is pending. There are signs that the trademark may well be in real jeopardy this time, and even the NFL Commissioner Roger Goodell has suggested that it might be time for a change. Of course, even if the trademark registration is canceled, the team could continue to use the mark as an unregistered trademark – one with a substantial amount of accumulated reputation and goodwill. Nevertheless, the loss of the protection available to registered trademarks will make the team’s enforcement of its rights much more difficult.

It may come as a surprise to many Canadians that the Washington Redskins also hold registered trademarks in Canada since 1980. The marks are registered for use in association with televised games, as well as for a range of other branded merchandise such as jerseys, hats, sports equipment and a range of other items.

Like the U.S. legislation, Canada’s Trade-marks Act bars the registration of trademarks that are considered “scandalous, obscene or immoral”. Marks that are not registrable at the date of registration can also be invalidated after the fact on the application of the Registrar or “any person interested”. No attempt has ever been made to challenge the validity of the registration of the Redskins mark in Canada; indeed there is scarcely any case law in Canada that touches on the interpretation of the “scandalous, obscene or immoral” bar to registration. It is not clear, for example, whether it would be interpreted to have the same breadth as the U.S. provision which also bars the registration of marks that are disparaging. Nevertheless, the potential impending demise of the Redskins’ trademarks in the U.S. raises interesting questions as to the fate of the Canadian registrations. If, after all, the mark is considered too offensive to be registered in the United States, would there any reason to consider it less offensive in Canada?

 

Published in Trademarks

Last year Canada (finally) responded to the changes wrought by the internet and amended the Copyright Act to address, among other things, the creation, reproduction and dissemination of works in a digital environment. The Supreme Court of Canada has also recently re-emphasized the need to interpret the law in a technologically neutral manner. These developments, however, may still not be enough to prepare us for the new wave of digital reproduction technology that is coming with 3-D printing. As was the case with other digital reproduction technologies, 3-D printing technology is now moving from very expensive devices predominantly in the hands of corporate owners, to increasingly inexpensive technology on the verge of becoming popularized among ordinary consumers. This shift is similar to those which we have already seen with respect to personal and mobile computing.

Three-dimensional objects of widely varying complexity can now be printed using this technology using a variety of materials. A recent news story has even reported on the potential for this technology to print organs for transplant. The printers are evolving to use a wide range of materials that go well beyond the initial plastics and polymers.

Three-dimensional printing is likely to present some significant challenges for intellectual property regimes. This is certainly the thrust of a recent article on the subject in the World Intellectual Property Review (WIPR). Unlike 2-D printing, which is predominantly useful in reproducing works protected by copyright, 3-D printing affects copyright, patent, industrial design and trademark law. We are not far from a future where individuals widely use online file sharing networks to widely distribute plans that will allow for the reproduction of all manner of 3-D objects, including utilitarian objects, replacement parts, jewellery, toys, guns, uniquely configured, eye-catching products, miniatures and action figures based on copyright protected characters from books or movies.

Canada’s IP laws – like those of other countries – may not be fully ready to deal with the challenges posed by affordable and accessible 3-D printing. In the first place, the reproduction of 3-D objects may implicate one or more IP statutes. Three-dimensional objects that are artistic in nature are often protected by copyright law; the drawings or plans for the making of three-dimensional objects may also be protected as artistic works under copyright law. The visual appearance and design features of utilitarian objects can be protected through industrial design registration. Three-dimensional features of objects may, if they are distinctive of their trade source, be protected as trademarks. Functional 3-D items may also be protected under patent law. Clearly, there is IP protection available for 3-D items, but it is highly fragmented which will likely make it harder for individuals and companies to understand the parameters of legal activity. Further, while copyright law has been substantially revised to deal with the challenges posed by easy digital reproduction and the online dissemination of works, the other regimes have not received attention in this regard. Much has also been done to address the different ways in which copyright law may be infringed online – this includes a number of important new defences to copyright infringement that seek to create balance, along with an adjustment of statutory damages available where copying is non-commercial in nature. The other IP laws in Canada are not well adapted to copying by private individuals for non-commercial purposes. Three-dimensional printing may thus bring with it a paradigm shift which will no doubt create tensions between IP owners and users that may ultimately have to be addressed by the legislature. Yet we are still grappling with old-tech IP reform. For example, a new IP Bill C-56, currently before Parliament, addresses counterfeiting under both the trademark and copyright regimes, but the focus of these amendments is on the movement of goods across borders, and on enhancing the available measures to stop the importation of infringing works. Just as the law is moving towards addressing the flow of counterfeit goods across the border, counterfeiting may soon shift to digitally networked 3-D printers, the online dissemination of plans and designs, and small scale reproduction of works by multiple and widely dispersed individuals.

Published in Copyright Law
Wednesday, 03 July 2013 09:48

Band’s Logo Attracts Provincial Ire

The Alberta rock band named Jr. Gone Wild has been in the news after Alberta’s Department of Culture ordered it to stop using a modified version of the province’s official emblem as part of the band’s logo. A photo of the band’s logo can be viewed along with the Edmonton Journal article on this issue.

A law titled the Emblems of Alberta Act makes it an offence to use “for commercial or business purposes” the armorial bearings of Alberta without consent. It is also an offence to use “any design so nearly resembling the armorial bearings of Alberta or any portion of them as to be calculated to deceive”. Although the band is using the arms for commercial purposes (it is selling T-Shirts emblazoned with its logo), it is not clear that this use of the modified design is calculated to deceive anyone. It remains an open question whether anyone viewing the logo would be led to believe that the band is in any way the official rock band of Alberta.

The Minister of Culture has also enacted regulations governing official emblems. According to these regulations, the emblem can be reproduced, used or displayed for non-commercial purposes so long as the use or display is in good taste. Commercial use is also permitted under certain conditions. These are that the use:

 

(a)    is free from any implication that the commercial or business purposes have any approval or accreditation from the Government,

(b)    is based on original drawings obtained from the Government, and

(c)    conforms, in the opinion of the Minister, to good taste.

The regulations are not clear about whether a modified version of the emblem can be used at all. For example, it is not clear whether the “good taste” requirement relates to modifications, or simply to the context in which the emblem is to be used. According to the story in the Edmonton Journal, it is not yet clear whether the band will change its logo and dispose of its unsold merchandise, or whether it will disregard the Minister’s order.

It is not unusual for governments to pass laws to protect their official emblems and insignia. For example there are similar statutes in Saskatchewan (with much stiffer penalties), and in Manitoba. There is certainly a public interest in ensuring that people are not misled into believing that certain products or services have been offered or endorsed by the government when they have not. Provincial arms, crests and flags are also listed as prohibited marks under s. 9(1)(e) of the Trade-marks Act. This means that these marks, or ones “so nearly resembling as to be likely to be mistaken” for them may not be adopted or used “in connection with a business, as a trade-mark or otherwise”. Thus there is ample law to protect against misuse of these signs or symbols.

The question is, of course, what the limits of freedom of expression are when it comes to the insignia of government, or other public symbols. According to the report in the Edmonton Journal, the band sees itself as “just doing art”. Artistic expression is, of course, protected expression in Canada. Yet like other of Canada’s civil liberties, it is subject to “reasonable limits demonstrably justified in a free and democratic society.

The Royal Canadian Mint recently backed down from a demand for licensing fees from a musician who used images of the penny on his album cover. There was also considerable controversy in Nova Scotia in the mid-2000’s when a company charged with the maintenance and operation of the Bluenose II began demanding licensing fees from local businesses who used the name or image of the iconic schooner. Of course, in each of these cases it was the symbol or name itself that was used, and not a modified version. And, while iconic, the penny and the Bluenose are not official insignia of government. The question remains as to how the balance should be struck between the public interest in the protection of official arms and insignia and the public interest in the freedom to use these insignia as a vehicle for expression.

Published in Trademarks

If there is any need for further evidence that the official marks provision in s. 9(1)(n)(iii) of the Trade-marks Act is in dire need of reform, then it can be found in the advertisement by Canada Post in 2005 of official marks in the words POSTAL CODE and CODE POSTAL.

Official marks are a special species of trademark available only to “public authorities.” In theory, a public authority is an entity that is under the control of a federal or provincial government and that acts for the public benefit. While a regular business would have to choose a trademark that does not create confusion with existing registered trademarks, a public authority can pick pretty much any mark it chooses. Further, unlike other businesses, public authorities can choose marks that are generic or descriptive. The adoption of “POSTAL CODE” and “CODE POSTAL” is a case in point. These words are generic: there really are no other words to describe the thing to which they refer – the postal code.

Public authorities also enjoy substantial procedural advantages when it comes to official marks: there is no opposition proceeding for official marks, there is no examination, and there are no registration fees. Once a public authority asks the Registrar to advertise an official mark (and has demonstrated that the mark has been adopted and used) the mark is protected. No one else may adopt, use or register the same mark, or one closely resembling it. Once advertised, such marks live on until voluntarily withdrawn, or removed from the register as a result of costly legal proceedings. For an example of the dysfunction of official marks, consider the fact that both the province of Nova Scotia (no doubt a public authority) and the Bluenose II Preservation Trust Society (almost certainly not a public authority) currently have the identical official mark BLUENOSE on the trademark register.

Official marks have a long history of abuse. The Federal Court has been kept busy trying to establish some standards for official marks – these are entirely absent from the legislation. Thus the court has established a test to aid in determining who qualifies as a “public authority”, has determined that public authorities must be Canadian, and has also set a test to determine whether certain official marks have been adopted and used by the public authority seeking to monopolize them. While the court has done its best, the entire system is flawed and is desperately in need of review.

This brings us back to POSTAL CODE. Canada Post, a public authority, has claimed official mark status for the very words in French and English that describe that series of numbers and letters that form a part of each address for mail delivery purposes. There is no obvious need for Canada Post to monopolize this term. There is no obvious public interest in having it monopolized. Yet ongoing litigation between Canada Post and Canadian company Geolytica suggests that Canada Post may be attempting to use a monopoly in the term POSTAL CODE/CODE POSTAL to make it more difficult for others to compete with it in the area of postal code related products or services. Geolytica, which offers a free online postal code look-up directory and other for-fee services through its Geocoder website is being sued by Canada Post for copyright infringement, and – surprise, surprise – for infringement of its official marks.

The recent report of the House of Commons Standing Committee on Industry, Science and Technology on the Intellectual Property Regime in Canada recommends amendments to the Trade-marks Act to narrow the definition of public authorities to help prevent abuse of official marks “to avoid stifling innovation and distorting markets”. Yet it is important to keep in mind that the problem is not just with those who wrongly claim to be public authorities. Actual public authorities might also use official marks to stifle innovation and distort markets – arguably this is what is happening with the POSTAL CODE/CODE POSTAL mark. Perhaps the reform of the official marks provision needs to be even more profound. Abolishing the category of official marks is a policy option that would require public authorities to play by the same trademark rules as all other businesses. With this as the default position – and with, perhaps, some clear exceptions for the names of government agencies or departments – we might finally see an end to the abuse of official marks.

Published in Trademarks

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
<< Start < Prev 1 2 3 4 Next > End >>
Page 3 of 4

Canadian Trademark Law

Published in 2015 by Lexis Nexis

Canadian Trademark Law 2d Edition

Buy on LexisNexis

Electronic Commerce and Internet Law in Canada, 2nd Edition

Published in 2012 by CCH Canadian Ltd.

Electronic Commerce and Internet Law in Canada

Buy on CCH Canadian

Intellectual Property for the 21st Century

Intellectual Property Law for the 21st Century:

Interdisciplinary Approaches

Purchase from Irwin Law