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Decision an important precedent for gripe site operators

Originally published in

Operators of gripe sites and their targets have an important new precedent for determining when criticism using someone else’s IP crosses the line to become infringement, Toronto intellectual property lawyer John Simpson writes in The Lawyers Daily.

The article discusses a recent Federal Court ruling, which concerned a website described by the judge as a “consumer criticism website where visitors can find information about the plaintiff, submit complaints about the plaintiff, and read complaints about the plaintiff” airline dating back to 1998 in a database.

“The decision will help companies who fight ‘gripe sites’ litigiously (which can often backfire). It is also a warning to gripe site operators not to take things too far when displaying a target’s trademarks or mimicking the design of its website,” writes Simpson, principal of IP and new media law boutique Shift Law,

The airline first complained about the site in 2011 after a redesign made it look more like the real thing, but stepped up its efforts following further changes in 2015 that mimicked the airline’s own online upgrade, Simpson writes. That prompted the plaintiff to sue for trademark infringement, passing off, depreciation of goodwill and copyright infringement.

Despite the defendant’s free speech and abuse-of-process arguments, the judge dismissed them all and sided conclusively with the airline.

Simpson says the decision was much more favourable to brand owners than several previous cases, where judges found the use of a company’s branding in media used to criticize them did not infringe their trademarks.

“That is because such usage was found not to be to identify a trade source and, in any event, not to be confusing to consumers who would likely notice that the defendant was disparaging the trademark owner, not trying to appropriate its reputation or goodwill,” Simpson writes.

However, in the airline case, the court found that the defendant’s use of a misspelled version of the plaintiff’s name and other company branding constituted use of its trademark under that law, and was confusing to consumers, Simpson writes, noting that there were two main factual differences that distinguished the matter from older case law:

  • “Firstly, there was evidence in this case that some consumers (and at least one travel agent) were actually confused into thinking that the defendant’s website was operated by [the airline],” Simpson writes.
  • “Secondly, the court found that in this case, the defendant was not only using the plaintiff’s branding to criticize the plaintiff but was also using it in association with a service that the plaintiff offered too — namely, providing a forum for complaints,” he adds.

Simpson says in the article that the decision is also notable because of its discussion of the fair dealing exception to copyright infringement. While the judge agreed with the site operator that he was engaging in parody, he found the use of the airline’s work was not “fair,” because its purpose was not to be funny, but to “defame and punish” the airline. In addition, the defendant could have achieved his aims without using its copyrighted artwork.

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