In its recent decision in Home Hardware Stores Limited v Benjamin Moore & Co Limited,2015 FC 1344,the Federal Court has taken us back to the basics of assessing the likelihood of confusion between trademarks and how to apply the relevant factors to consider, as set out under section 6(5) of the Trademarks Act. Too often, arguments and decisions on this issue are themselves plagued by confusion as to what is and what isn't confusing and why or why not. The reasons for judgment in this particular case resolve some of that confusion.
Shift Law Blog
Online threats to commercial reputations are on the rise. These include “attack sites”, “gripe sites” (e.g. RipOff Report), cyber-libel via social media, domain name high-jacking, meta tag high-jacking and defamatory email campaigns. Online brand and reputation attacks are easy and inexpensive to wage and they can be devastatingly effective.
When confronted with an online attack to its brand, a business has a number of options. It can respond with a “corrective campaign”, hire an online reputation management expert, hire a lawyer to write demand letters to the attacker (if known) or to Internet intermediaries or commence a lawsuit – or none of or all of the above.
Back in April, we wrote about the history in Canada of a U.S. trademark infringement doctrine called “initial interest confusion” – see “A brief history of passing off, websites and "initial interest confusion" in Canada”. As we explained there, “initial interest confusion” refers to when customers seeking the plaintiff’s website are initially attracted to the defendant’s website because the defendant has used the plaintiff’s trademark in a domain name or in meta tags embedded in the defendant’s website.
We suggested that, in the Red Label Vacations Case (2015 FC 19), the Federal Court had retreated a bit from what appeared to be a trend towards accepting this as a form of trademark infringement in Canada. Since the decision in Red Label Vacations, two additional decisions have come down that provide further insight into where the law stands, and where it is headed, with respect to initial interest confusion in Canada.
You've spent years building goodwill in your business and translating it into your brand name. You've registered your brand name as a trademark which you use as the domain name for your company's website. You've invested many thousands of dollars optimizing your website and using it to promote your business. Suddenly you discover that a competitor has registered another domain name that incorporates your trademark and is using it to redirect your customers to its own website. Not only that, but your competitor's website contains misleading comparisons between its products and yours, and false and disparaging statements about your business.
Nightmare scenarios like this are becoming more and more common. It is all too easy for a competitor to strategically integrate your branding into their online presence – to ride on your coat tails and/or to disparage your business.
So, what can you do? Fortunately, there are a number of legal remedies available to you.
U.S. artist, Richard Prince, has generated considerable mainstream publicity by appropriating images he found on Instagram and featuring them in his “New Portraits” collection. A number of copyright lawyers in the U.S. and Canada, including myself, have also weighed in on the legality of Prince’s appropriation art.
The Federal Court’s recent decision in Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19 is the latest in a series of Canadian cases to address the tort of passing off in the context of website domain names and meta tags. And it is a departure from where things had appeared to be headed, at least with respect to “initial interest confusion”.
What can you do when you want to use or register a trademark that someone else has already registered but who, you suspect, is no longer using it? This was the issue recently facing one of Shift Law’s clients. They had been using the trademark, BROADVIEW, in association with their financial services for years. But, when they went to register it, they discovered that it was already registered for financial services in Canada by a large U.S. institution. While they suspected that the U.S. company might not be using the trademark in Canada, the registration was a problem nevertheless. It was blocking their own application to register BROADVIEW and posed an infringement risk.
Ultimately, Shift Law persuaded the Register of Trademarks on behalf of its client to invalidate the existing BROADVIEW registration on the basis of the “use it or lose it” principle: Shift Law v. Jefferies Group, Inc., 2014 TMOB 277. The Register of Trademarks agreed with Shift Law's submissions that the registrant’s evidence of use of the trademark in Canada was not sufficient to maintain the registration. This cleared the way for Shift Law's client to register their own BROADVIEW trademark and to continue using it without the risk of getting sued.
Take a photo, add a header and footer and voilà, you have yourself a meme. It is often really that simple. If your meme happens to be culturally relevant and creative or if the right audience happens to see it, the creation could very well take on a life of its own. The advertising revenues associated with social media outlets like Facebook and Instagram have given “likes” “shares” and “follows” serious weight. A steady flow of captivating content ostensibly translates into increased web traffic and thus more potential consumers, so advertisers and entrepreneurs are eager to attach themselves to the latest and greatest Internet or cultural sensations.
There’s never been a better time than now to register your trademarks, like the name of your business, your logo or the brand names for your products or services.
In Canada, registering a trademark means getting it listed on the Register of Trade-marks in the Canadian Intellectual Property Office. A trademark does not have to be registered to enjoy a basic level of protection – you may be able to stop others from using your unregistered trademark to “pass off” their services as yours where your customers are likely to be confused. But registration brings a number of very important benefits.
By January of 2015, Canada will have implemented the final pieces of the Copyright Modernization Act - Canada’s answer to bringing copyright laws in line with the digital age. This has been an ongoing process since 2012 and was initiated as a response to criticism that Canada’s copyright system was not doing enough to protect the rights of copyright owners. The Act has already brought sweeping changes to copyright in relation to fair dealing exceptions, “user generated content” and statutory damages. See our earlier blog post, Canada’s Copyright Modernization Act.
A recent case from Texas demonstrates how the doctrine of “inevitable disclosure” can prevent departing employees from misappropriating an employer’s trade secrets and other valuable confidential information. In Brink’s Inc. v. Patrick, Case No. 3:14-cv-775-B (N.D. Tex., 6/24/14), the Court prohibited a departing employee from taking a job with his employer’s direct competitor on the grounds that, if he did so, he would inevitably disclose his employer’s proprietary confidential information.
Recent years have seen an increase in trade secret theft and misappropriation of confidential business information throughout North America. This is probably due to a number of factors, including increased employee mobility, corporate downsizing and the growing recognition of the value and portability of confidential information. Departing employees may walk away with proprietary information on termination or misappropriate it in anticipation of being terminated to enhance their value to other prospective employers or to compete with their former employer. Whatever the reason, it is more important than ever for employers to identify and protect their confidential business information (“CBI” for short).
Canada’s Trade-marks Act is about to undergo its most significant amendments since it was first enacted in 1953. Even the spelling of “trade-mark” will change (to “trademark”).
Trademark practitioners and their clients should take note of the proposed changes (outlined below) as some will be relevant to trademark selection and prosecution strategy and enforcement decisions that should be made before the changes come into effect.
I recently argued a summary judgment motion on an interesting and somewhat novel issue relating to domain names: can someone other than the registrant of a domain name be its lawful owner - own title in it – where there is no evidence that the domain name was registered in bad faith or that it infringes someone else’s trade-mark? In Mold.ca Inc. v. Moldservices.ca Inc., the Ontario Superior Court answered this affirmatively – in our client's favour. The decision has received much attention in the media.
Our friends at Ink Tank posted a great blog the other day about how other businesses can “tread” on your brand – knowingly or not - from “borrowing” distinctive elements of your brand, to unwelcome parodying to blatantly infringing your trade-mark.
All of these things can do harm to your brand and to your business. And they can do so in different ways, some more obvious than others. Obviously, if a direct competitor is using a brand name or a logo that is very similar to yours in order to appropriate your goodwill and your customers, that’s going to be harmful (it can result in a direct loss of sales). Less obvious is the harm that can be done to your brand if a non-competitor – say, someone in a different part of the country or in a slightly different line of business – adopts a confusingly similar brand name or “borrows” the distinctive elements of your brand.
Understanding how your brand can be damaged when others “tread” on it is important to knowing when you should consider legal action. Enforcing your trade-mark rights (or “policing” as it’s sometimes called) is critical to protecting your brand. In fact, if you don’t police your brand, or if you do it ineffectively, you are not only jeopardizing the strength and integrity of your brand, but you are also jeopardizing your legal rights to protect it at all – that is, the ability to stop others from ripping it off.
The Ontario Superior Court’s recent decision in Rains v. Molea allegations of copyright infringement in a series of paintings of crumpled paper, is a fun read for an IP lawyer. And while the context is conceptual art the decision is likely to be cited in other contexts in the future – like cases dealing with copyright in software and reality TV shows.
The Court had to deal with some tricky issues like: Where do you draw the line between idea and expression in conceptual works? When is a “series” of works a compilation such that copyright protects the whole as well as the parts? Can copyright exist in a work that is randomly generated? Is a likelihood of confusion as to who created the work (the test for trade-mark infringement) relevant in determining copyright infringement?
When a photographer “tweets” her photographs on Twitter or a videographer posts his videos on Vimeo or YouTube, the works become available to be used by anyone in the world, right? After all, isn’t sharing the whole point of social media? In a legal sense, are the photographer and videographer not granting to the world an implied license to use their work by using social media to exhibit them?
That was essentially the argument advanced – unsuccessfully – on behalf of Agence France Presse (“AFP”) in Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y.). The case, in which summary judgment was granted earlier this year, has garnered much interest. It is one of the only cases to address if, when and how user generated online content can be used for commercial purposes by third parties.
The facts of the case are as follows. Daniel Morel, the defendant and counterclaimant, was a photojournalist who took several iconic photographs of the aftermath of the 2010 earthquake in Haiti and then posted the photos on his Twitter account. Soon after he posted them, AFP obtained them from a third party, transmitted them to Getty Images which, in turn, then “licensed” the photos to news agencies like CNN. Morel accused the news agencies, Getty and AFP of infringing his copyright in the photos. AFP pre-emptively brought an action for a declaratory judgment that it had not infringed copyright, claiming that Morel had granted them an implied license in the photos when he posted them on Twitter. Morel counterclaimed for copyright infringement against AFP, brought third party claims against the news agencies and others and then sought summary judgment.
On February 13, 2013, the Supreme Court of Canada (SCC) heard the appeal of the now (in)famous copyright case of Cinar Corporation et al. v Robinson et al. [Cinar], concerning the infringement of one Robinson castaway (Robinson Curiosité) by another (Robinson Sucroë). The case has steadily worked itself up from the Quebec trial division, with the appeal court's decision (France Animation v. Robinson, 2011 QCCA 1361, [France Animation]) now being contested before the nation's highest court. The SCC has yet to release what is sure to be a rather interesting judgment, given that and lower courts have themselves engaged in some skilful maneuvering around issues that have extended beyond the realms of copyright law.
Recently, I’ve been following with interest two copyright infringement lawsuits in the U.S. that have been brought by regional MLSs (Multiple Listing Services) against American Home Realty Network, the operator of the real estate search engine and referral site, NeighborCity.com. The cases have been receiving a lot of attention south of the border, including in a recent blog post by intellectual property law professor, Eric Goldman, on how Anti-Scraping Lawsuits Are Going Crazy in the Real Estate Industry.
Like the Century 21 v. Zoocasa case here in Canada a couple of years ago, both of these cases address whether and how compilers of commercially valuable information (in all three cases, residential real estate listings) can protect it from being “scraped” from their websites by data aggregators and reproduced on competing websites. It is a longstanding issue in the real estate industry, particularly in Canada where the Canadian Real Estate Association has drawn the wrath of the Competition Bureau over its efforts to limit public access to MLS databases.
Registering and using a domain name that is similar to a competitor’s for the sole purpose of redirecting traffic to one’s website is a dirty practice. But like many other internet offenses, it does not always fit within traditional causes of action, including trademark infringement or its common law cousin, passing off.
Dentec Safety Specialists Inc. v. Degil Saftety Products Inc., 2012 ONSC 4721, is the latest Canadian authority to consider when the use of a domain name exclusively for “redirect” purposes will constitute passing off. It almost certainly becomes the leading authority, among very few, on “the tort of domain name passing off” in Canada.