The doctrine of “initial interest confusion” has again surfaced in Canada, and once again in the context of online advertising, confusing domain names and passing off (common-law trademark infringement). We’ve been tracking the development of this subject over the past couple of years beginning with “A Brief History of Passing Off, Websites and Initial Interest Confusion in Canada”, and more recently in “Initial Interest Confusion in Canada: Recent Developments. The British Columbia Court of Appeal (“BCCA”) has now provided appellate guidance that resolves some previous inconsistencies and confirms that initial interest confusion can, in fact, ground a claim for passing off or trademark infringement in Canada.
Shift Law Blog
For two Christmas seasons in a row the chic white-bearded 50-something-year-old model, Paul Mason, has donned designer garb and paraded around Yorkdale mall calling himself “Fashion Santa”. Just as we enter into the festive holiday season, a legal debate is brewing over this dapper Saint Nick that has everyone asking who owns “Fashion Santa”? Paul Mason or the mall? And what is “Fashion Santa”, an idea? a brand? a character?
Here is a simple approach to this very seasonal dispute over intellectual property rights:
In a world where businesses are aggressively competing for the attention of consumers, paid online reviews and endorsements are now popular and even commonplace forms of advertisement and promotion. However, this form of paid advertising is, now more than ever, raising questions around bias and lack of transparency in incentivized marketing.
Boaden Catering Limited v. Real Food for Real Kids Inc. is a recent decision from the Ontario Superior Court that includes a healthy plateful (pun intended) of intellectual property related issues, both substantive and procedural. Shift Law obtained summary judgment in this case on behalf of the successful defendants, dismissing the plaintiff’s action in its entirety.
It is a basic tenet of copyright law that copyright does not protect facts or ideas. Data, information, facts, systems, opinions, or broad common themes cannot be anyone’s exclusive property. Copyright does, however, protect the expression or compiling of facts in a fixed, original form. Recently, two cases were heard in Canada where litigants challenged the boundaries of what can be protected through copyright - with different results. The decisions in Maltz v Witterick, 2016 FC 524 and Geophysical Service Incorporated v Encana Corporation, 2016 ABQB 230 both help to define the line between facts and copyright protectable expression.
The vast majority of disputes over intellectual property rights, including trademarks, patents and copyright, settle before reaching a courtroom. There are many advantages to resolving your dispute through a settlement agreement instead of leaving it to a judge to resolve it, even when that means accepting a less favourable result than what you’d expect to get from the court. For one thing, you can never be certain how the court will decide the case, no matter how confident you are in your position. With a settlement, on the other hand, you get certainty –at least in theory. A settlement will also spare you the stress and distraction of protracted litigation, not to mention the considerable costs.
As the e-commerce space becomes ever more crowded, disputes over confusingly similar domain names are becoming ever more common. One issue that has been particularly vexing is whether a court can order the registrant of a domain name who uses it to infringe someone’s trademark to deliver up that domain to the rightful trademark owner.
I was recently asked by the Toronto Star to comment on Lucasfilm’s decision to serve a charitable organization called Newmindspace with a cease and desist letter demanding that they stop all use of the term “Light Saber” in association with their charitable events. You can see the article and get some more background here. As we all know, Lucasfilm’s branding is iconic – it has totally infiltrated popular culture. The company owns an arsenal of trademarks with well over 100 registered marks in Canada including “Light Saber” registered back in 1977, and still in use today.
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.
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).