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When is it "fair" to copy an original work?

Posted by on in Toba's Blog

A recent copyright decision of the Federal Court of Canada, namely, The Canadian Copyright Licensing Agency (Access Copyright) v York University, 2017 FC 669, has stirred the conversation around what constitutes ‘fair’ for the purposes of fair dealing. For our Shift Law Blog readers, the case has given us a great reason to write about how the fair dealing exception to copyright infringement works. What follows is a discussion of what fair dealing is, followed by a discussion of the case.

This post concerns one of the two recent landmark decisions from the Supreme Court of Canada concerning territorial commercial interests on the borderless Internet. In Google Inc. v. Equustek Solutions Inc. 2017 SCC 34, the Court confirmed that Canadian courts can grant orders prohibiting the infringement of Canadian trademarks and the enabling of trademark infringement wherever that occurs, including on foreign search indexes that list infringing websites. Canadian court orders can also bind persons who are not parties to the underlying lawsuit, including Internet service providers who, inadvertently, provide the means for trademark infringement.

The Supreme Court of Canada has released two landmark decisions in recent days relating to territorial commercial interests on the borderless Internet. This post concerns Douez v Facebook, Inc., 2017 SCC 33, a decision that marks an important development for the law of consumer contracts and more particularly, the enforceability of forum selection clauses in website terms of use. Specifically, the Court has held to be unenforceable Facebook’s forum selection clause which states that disputes arising from, or connected with, the use of Facebook must be resolved in California regardless of where they arise.

GOOGLE: Still a trademark

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Looking for the city’s most popular restaurant? Google it! Need to confirm a historical fact? Google it! Doubt as to directions? Google it! The act of “googling” has become common place and common parlance when we refer to conducting an online search. The pervasive use of “google” as a verb, rather than strictly as a brand name has raised questions as to whether it remains an enforceable trademark or has, through everyday usage, become a generic word in which no one may claim exclusive rights. A recent decision from the U.S. on this very issue provides some clarity around when trademarks such as GOOGLE will fall victim to their own success.

The federal government’s recently tabled Cannabis Act (Bill C-45) – which will legalize the recreational use of cannabis in Canada –will affect, in one way or another, a wide variety of existing regulatory regimes, including those relating to criminal law, health law, employment law, municipal law, sales tax and consumer protection, among others. Naturally, what we’re interested in most here at Shift Law is how it will affect trademark rights.

February saw two notable decisions from Canadian courts on motions for interlocutory injunctions in trademark infringement cases. The Federal Court’s decision in Sleep Country Canada Inc. v. Sears Canada Inc., 2017 FC 148 (granting the motion) and the Quebec Superior Court’s decision in Irving Consumer Products Limited v. Cascades Canada ULC, 2017 QCCS 526 (dismissing the motion) are both interesting examples of how courts will approach this kind of motion.

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.

“Fashion Santa” - A Very Seasonal IP Dispute

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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.

Hand over that domain!

Posted by on in Toba's Blog

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”.

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