From “Hockey Night” to Trademark Fight?

Much has been written in the Canadian popular press in the last week respecting “The Hockey Night in Canada Theme”, sometimes called “The Hockey Theme” – the familiar music which has accompanied broadcasts of the Canadian Broadcasting Corporation’s “Hockey Night in Canada” telecasts nearly every Saturday night during the hockey season, for the last 39 years. The music is well-known to most Canadians, hockey-lovers or not: it is frequently referred to “Canada’s Second National Anthem.”

Late last week, it appeared that negotiations to renew the recently expired license agreement between the CBC and Copyright Music and Visuals (agent for the rights-holder, Dolores Claman) fell through: Copyright Music and Visuals announced the CBC had elected not to renew their license, ending their long relationship with Claman. The popular press quickly picked up on the news: articles bemoaning the end of the long and storied history of the song on the CBC filled the weekend papers; hockey fans on radio call-in shows and on the internet grieved the loss of the song; Facebook groups were organized to prepare petitions for the “Preservation of the Hockey Night in Canada Theme”.

With a new week, came new hopes: on Monday morning, the CBC announced it had appointed a well-known entertainment lawyer to assist it in making a deal for a new licensing arrangement. Then, in a somewhat surprising move, rival network CTV (owner of the popular TSN and RDS sports stations) announced it had “saved” the song, completing a deal that, according to press reports, gives it the right to use the song “in perpetuity” in association with its NHL hockey broadcasts, as well as in association with its hockey coverage as part of the 2010 Olympics and Paralympic Winter Games. Read more

Stanleypark.com – Not For Sale

We previously reported on the measures in place to secure protection for Olympic brands ahead of the 2010 Winter Olympics in Vancouver.

The potential windfall for local businesses due to Olympic tourism and general Olympic goodwill has now prompted the Vancouver park board to scramble to secure brand ownership of the popular Vancouver landmark, Stanley Park. The board are trying to purchase the domain name stanleypark.com from owner Gerry O’Neill who runs a lucrative horse-drawn carriage business in the park, but Mr. O’Neill, whose business generates close to $1 million in annual revenue, is not interested in selling. The website provides information to tourists on the fully-narrated horse-drawn carriage tours which include a complete history of the 1,000 acre park and cater to large crowds of visitors during the summer months.

More Champagne, anyone?

We recently reported on the difficulties in registering wine trademarks consisting of names of geographic locations. The Federal Court of Canada (Trial Division) concluded that geography was one of the most important considerations of the average consumer when purchasing a wine. Accordingly, the registration of a trademark consisting of a geographic description unfairly prevented other local winemakers from listing that place of origin on their brands. As all good wine gurus know, it is the land, air, water and weather where grapes are grown that make each wine unique. Geographic location is a huge selling point for exclusive brands, as is evident with the popularity of real French champagne.

For more than eight decades, only 319 select vineyards within specific boundaries of north-eastern France had the right to brand their sparkling white wines as “champagne“. But now, due to the increasing demand for champagne from China and Russia, the Institut national de l’origine et de la qualite, which governs the Appellation d’Origine Controlee designation for champagne, is set to expand the appellation’s boundaries. The move is expected to provide a windfall for the lucky vintners whose vineyards happen to lie within the expanded region and highlights the value of a trademark consisting of a geographic location. Worldwide exports of champagne hit an all time record in 2007.

The name champagne is legally protected in most countries in order to prevent sparkling wines from outside the Champagne region of France from using the brand. Until two years ago, US winemakers, in particular, capitalized on the popularity of the brand and commonly sold sparkling wines under the name “California Champagne”, ignoring the outcries from indignant French viticulturists. But now, only a few older grandfathered brands in the US may use the name “champagne” in a move to correctly label US sparkling wines as “sparkling wines”. In 2003, Canada and the European Union entered into an agreement which committed the parties into protecting each others’ geographical indications for wines and spirits and the use of the term “Canadian Champagne” will cease after December 31, 2013.

Last year, the wine regions of Sonoma County and Paso Robles, California; Chianti Classico, Italy; Tokaj, Hungary; and Victoria, and Western Australia, Australia added their names to a growing list of signatories of the Joint Declaration to Protect Wine Place & Origin, a set of principles aimed at educating consumers about the importance of location to winemaking.

Change You Can Xerox

When Hillary Clinton recently accused presidential rival Barack Obama of political plagiarism by describing him as the candidate of “change you can Xerox“, trademark lawyers at Xerox Corporation winced. For years, Xerox has fought against the genericisation of the Xerox brand and trademark. A genericised trademark is a trademark or brand name that has become the colloquial or generic description for a particular class of product or service. The generic use of the term “Xerox” as a verb in place of the word photocopy, diminishes the value of the Xerox trademark in the marketplace and can result in the loss of intellectual property rights by the trademark holder. In the past, Xerox Corporation has attempted to police its brand use by launching advertising campaigns promoting the “Xerox machine” and has been successful in protecting the trademark in Canada and the United States. The brand has, however, become generic in Russia, Bulgaria, Portugal and Romania. Aspirin, Band-Aid and Thermos are also examples of brands which became victims of brand genericisation.

Under Canadian trademark law, a trademark should never be used as a noun (whether in singular, plural or possessive form) or as a verb. Every day phrases such as “I need a Kleenex” should be discouraged as the correct use of the trademark is “I need a Kleenex tissue”. It may seem natural and even beneficial from a marketing perspective to use the trademark as a noun or verb. Many like to have their trademark considered synonymous with the wares or services with which it is associated. However, certain trademarks, through misuse by their owners and others, have passed into the English language by becoming generic terms. The brands Escalator, Jacuzzi, Linoleum and Tabloid were all once trademarks of a specific product but are now generic terms commonly used to describe a product category. The use of a brand name as part of the English language, or any language should always be avoided to prevent genericisation of the trademark.

Social Networking & Anne of Green Gables

Anne of Green Gables is widely regarded as a Canadian cultural icon. The wholesome image of the redheaded Anne with a straw hat and pigtails is synonymous with Prince Edward Island, the location of the book written over 100 years ago by L.M. Montgomery. The province jointly owns the Anne of Green Gables trademark with the heirs of L.M. Montgomery and have even established the “Anne Authority” to ensure that Anne’s image is properly protected.

According to a recent news report, a new Canadian children’s website, www.annesdiary.com, has come under wrath for using the unauthorised image of Anne to provide a social networking site for girls between the ages of 6 – 14. The website features an avatar in the likeness of Anne, claiming to be inspired by the much loved Anne of Green Gables novels. A spokesman for the website said that the trademark holders were approached but declined to give their permission to use the Anne image. Prince Edward Island Development Minister said that it takes violations of the trademark very seriously and would pursue the matter vigorously.

Despite the controversy, many parents will welcome the new website because it claims to be one of the most secure websites for children in the world. The site takes the protection of web content for children very seriously and is secured by the use of a biometric fingerprint sensor. According to the website, once a child has enrolled on the site, only they can access their online secure bedroom and diary. Members receive a fingerprint reader using a one-time authentication code thereby registering their identity on the secure database. The fingerprint matrix itself is encrypted and transmitted securely across the Web to authenticate users. Even if someone gets a hold of the fingerprint matrix, it will be undecipherable and unusable to them.

Parents may also use the secure option to register their child on the site by providing details of a Sponsor who is able to verify the age and identity of the child. In order to be eligible, a Sponsor must be known to the child, be a resident of the country in which the registrant lives, and be a recognised professional from the website’s list. Parents must provide an e-mail mailing address and telephone number where a sponsor can be contacted for verification.  Sponsors are e-mailed a one-time Authentication Code which they must use to activate the child’s Anne’s Diary account. This code is used when the child first registers her fingerprint to initialize her account.

A spokesperson for the website said they would wait to hear from the Anne Authority before deciding on the next step.

World of Webkinz

Webkinz, the little stuffed animal toys which may be activated through a code to enter the on-line Webkinz world, are drawing more and more children and tweens into the realm of virtual reality. In the past, many companies have been reluctant to charge children for website access for fear of alienating parents. But the Toronto based Canadian company Ganz may have solved this problem through the powerful brand that is the Webkinz cuddly toy and on-line environment.

Visitors to the free Webkinz website  spent more than one million hours there in November, with the average child clocking up an average of two hours per visit. However, in order to fully access the Webkinz world, parents must pay approximately $15 for a Webkinz real-world pet toy which children may then “adopt” and care for on-line. Users give each toy a gender and a name and can spend “kinz cash” to buy food, clothes and furniture or even to take neglected pets to a virtual doctor.

Ganz have now launched a line of accessories such as cosmetics and clothing items with codes that redeem a prize for the pets’ on-line avatars in order to ensure that the company capitalizes on children’s web time.