Copyright? Wrong! Oshawa Councillor Misses the “Mark”

An Oshawa, Ontario Regional Councillor, Robert Lutczyk, recently made a brazen attempt to claim copyright in the name “University of Ontario Institute of Technology”. Lutczyk registered copyright in the name of the University and then tried to use his registration to prevent the publication "Oshawa This Week" from using the name in an article, threatening legal action if they did not comply. Lutczyk’s attempt to assert copyright appears wrong on several points.

First, there is no copyright in a name. Copyright in Canada is governed by the Copyright Act and arises in literary, artistic, dramatic and musical works. A name, without more, does not fall under the definition of a work. Read more

Flattery is Still Infringement

A story in the Globe and Mail this week illustrates that the use of a popular logo may be a form of flattery to the owner, but the owner will still be concerned about infringement of its IP rights. Gordon DeRosa, after 21 years of public service, is again running for re-election to the Trail City Council, Trail being a community of 8000 in the interior of British Columbia. Mr. DeRosa’s election signs used the well known Energizer Bunny, and the slogan “Re-elect DeRosa, Still Energized”. The Eveready Battery Company, which owns an extensive trademark portfolio in Canada, sent a cease and desist letter to Mr. DeRosa, advising that the use of the Energizer trademarks constituted violations of the company’s IP rights. Mr. DeRosa has taken down his election signs.

If a lawsuit had ensued it might have been argued that Mr. DeRosa was not using any trademarks in association with wares and services since he was running for political office, but presumably Eveready would have succeeded on the basis of copyright infringement.

Comparing Apple to Apple

A report in the Globe and Mail tells the story of a small Vancouver Island school’s run in with tech heavyweight Apple Inc. in a dispute over the use of the school’s logo. Victoria School of Business and Technology (VSBT) reportedly adopted, three years ago, a logo featuring an apple with a silhouette of a mountain and the letters VSBT superimposed over top. VSBT’s apple has three bumps at the top of the apple, uses the colours blue, white and green quite prominently, and the apple is whole: no bite appears to have been taken out of it, as is the case with Apple Inc.’s well known logo. Apple’s logo, which is the subject of numerous registrations at the Canadian Intellectual Property Office (CIPO) and which has been in use for over 30 years, features a bite taken out of the right side, two bumps at the top and no letters or other figures superimposed on it. In the marketplace, the logo is often depicted in an off-white colour; historically, it also often appeared in stripes and other colours as well.

As is often the case in these disputes, the media is portraying the issue as pitting VSBT’s “David” against Apple’s “Goliath.” The school’s website states that “VSBT is the leading provider of computer and business training for government ministries, corporation and individuals,” and indicates that training is available on both IBM-style personal computers as well as Apple’s MACINTOSH-brand computer systems. At the time of writing, we could locate no record in CIPO’s online trademark database of an application to register VSBT’s logo. Read more

Making Room On The Brandwagon

Here at the Canadian Trade-mark Blog, our first-ever post focused on Interbrand’s 2006 Best Global Brands Survey. As we’ve tracked the survey over the years, we’ve noted several constants – like COCA-COLA’s stranglehold on the number one spot, the predominance of US-brands in the top 10, and the sparse number of Canadian brands from the top 100.

The 2008 Best Global Brands survey was released last week, and little has changed: COCA-COLA took the top spot again and US-brands continue to dominate the top 10. However, we’re pleased to report that the list now features twice as many Canadian brands as last year.

At number 44 is THOMSON REUTERS – formerly The Thomson Corporation – who engaged in extensive advertising of its new brand following its merger with Reuters Group earlier this year.

Canada’s new addition? Charging in at number 73 is… Read more

Applicant Deemed Not a “Person Interested” Under the Trade-marks Act

In Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P., the Federal Court ruled that, despite the low threshold, the applicant, Fairmont Resort Properties Ltd., was not a "person interested" for the purposes of challenging the respondent’s, Fairmont Hotel Management, L.P.’s, trade-marks (the "Hotel Marks") under s. 57(1) of the Trade-marks Act.

The applicant was incorporated in 1979 as a numbered company for the purposes of marketing timeshare units constructed by Fairmont Hot Springs Resort Ltd. ("Fairmont Hot Springs"), which, at that time, had common ownership and control with the applicant. The timeshare units were located near Fairmont Hot Springs, British Columbia. In 1985, with the consent of Fairmont Hot Springs, the applicant changed its name to its current name. By 1996, the applicant was fully independent from Fairmont Hot Springs. In 2005, it had annual revenues of over $10 million dollars and Fairmont Hot Springs had revenues of over $12 million dollars.

The respondent is a wholly-owned subsidiary of Fairmont Hotels & Resorts Inc. ("Fairmont Hotels") The hotel chain was started by Tessie and Virginia Fair with one hotel on Knob Hill in San Francisco. They alleged to have coined the word "Fairmont" by combining the surname Fair and a description of Knob Hill as a "mont" or mount. Through the respondent, Fairmont Hotels claims to be North America’s largest luxury hotel management company. In 2004, Fairmont Hotels had revenues of over $320 million U.S. Read more

Damages for Counterfeit Goods – Another Significant Award

We previously reported on the Federal Court case Louis Vuitton Malletier S.A. et al. v. Yang et al. (“Yang”). Louis Vuitton was back in court in June, but this time the venue was the British Columbia Supreme Court. In Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd., Louis Vuitton proceeded by way of a summary trial under British Columbia’s Rule 18A, seeking judgment against a number of defendants for trademark and copyright infringement.

In 2004, Louis Vuitton had executed an Anton Pillar Order against the defendants. In 2005, Louis Vuitton obtained a Federal Court order against the defendants and entered into a settlement agreement in 2006, whereby the defendants pledged to Louis Vuitton that they would not sell any more counterfeit merchandise.

There were four individual defendants and two corporate defendants. The principal of the enterprise was Wynnie Lee (“W. Lee”). W. Lee’s daughter, Francisca Hung-Yee Ngan (“Ngan”), W. Lee’s sister, Jacqueline Lee (“J. Lee”), and a former employee, Lisa Le Dung Tran (“Tran”) were co-defendants. W. Lee and J. Lee carried on business through W. Lee Corporation and J. Lee Corporation, respectively. However, the Court found that the corporations could not be used as a shield, because W. Lee’s and J. Lee’s actions constituted willful and deliberate infringement. Read more

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.