Opinions, insights, and news
Opinions, insights, and news
A recent decision of the Federal Court is an important new precedent for determining when the use of others’ intellectual property to criticize their products and services, including through “gripe sites”, becomes actionable infringement. At issue in United Airlines, Inc. v. Jeremy Cooperstock, 2017 FC 616 was a website located at www.untied.com which the Court described as a “consumer criticism website where visitors can find information about the plaintiff, submit complaints about the plaintiff, and read complaints about the plaintiff dating back to 1998 in the database of complaints.”
The defendant launched the website after negative experiences with the plaintiff, United Airlines. United first objected to the website in 2011 when the defendant designed it to resemble United’s own website. For the next few years, he ignored United’s requests to alter its appearance. In 2015, he made it look even more like United’s, tracking changes on his website that United had made to its own.
United sued, claiming trademark infringement, passing off, depreciation of goodwill and copyright infringement. The defendant responded with a number arguments, citing previous cases where displaying a plaintiff’s branding for the purposes of criticism or complaint was found not to infringe its intellectual property rights. The Court rejected all of the defendant’s arguments, including his allegations of delay and abuse of process and his arguments that his freedom of expression was at issue.
The decision is decidedly more favourable to brand owners than previous cases involving similar facts (including Michelin v. Canadian Auto Workers  2 FCR 306 (FCTD) and BCAA et al. v. Office and Professional Employees’ Int. Union et al., 2001 BCSC 156). Previously, the use of a company’s branding in media used to criticize them was found not infringe their trademarks. That is because such usage was found not to be to identity 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.
By contrast, in the United Airlines case, the Court found that the defendant’s use of “Untied” (a clever typo with a double entendre) and other aspects of United’s branding was “use” of a trademark in a legal sense and was also confusing to consumers. While this is at odds with the previous cases noted above, there were important factual findings in this case that distinguish it from the previous cases and make it possible to reconcile the opposite conclusions.
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 United Airlines. The defendant alleged that these individuals must have been “cognitively challenged ... to believe they were actually complaining to the airline”. But the Court found that there were enough of them to reflect the average consumer from whose perspective the likelihood of confusion must be assessed. There was no such evidence of actual confusion in the previous cases referred to above.
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. Moreover, the court found that by using “Untied” instead of displaying the plaintiff’s actual trademark, the defendant was using his trademark to distinguish himself as a source of complaints forum services. The implication of this finding seems to be that using a variation of a company’s trademark on a criticism or complaint website presents a greater risk of being held liable for infringement than using the company’s actual trademark.
The decision is also notable for its consideration of whether copying the design elements of United’s website was defensible under the fair dealing exception to copyright infringement. The Court agreed with the defendant that his website was a form of parody, as defined in the relevant jurisprudence, in that it “evokes existing works (the United website, the United Logo, and the Globe Design) while showing some differences (such as content and disclaimers), and it expresses mockery (and criticism) of the Plaintiff”.
However, fair dealing with a work means not only that is for an allowable purpose (e.g. parody); it also must be “fair”. In this case, the court found that the defendant’s parody of United’s site was not fair because, among other things, it was not intended to be funny but rather to “defame or punish” United and the defendant did not have to copy United’s artwork to achieve his purposes.
Overall, 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.
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