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.
Shift Law Blog
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 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.
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.
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.
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.
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.