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Trying to Make Sense of Olympic Trademarks

The front page of the Vancouver Sun today (Thursday, March 29, 2007) features an interesting article on the official marks registered by the Vancouver Organizing Committee for the 2010 Olympic Games (“VANOC”) and the Canadian Olympic Committee. The article notes that VANOC has rights to FRIEND as an official mark and could potentially bring legal proceedings if someone attempts to use it in connection with a business.  

According to VANOC, they have no intention of preventing the use of words like “friend” on their own. They are, however, concerned about ambush marketing in the lead up to the 2010 Olympic Games and intend to prevent persons who are not properly licensed from marketing wares and services that suggest a connection with the Games.

It may be up to the courts to determine whether ordinary words like “friend” can be official marks. The Vancouver Sun article references an Alberta case (Canadian Olympic Association v. Hipson) that arose in the lead up to the 1988 Calgary Winter Olympics in which the court questioned the Association’s right to claim “winter” and “1988” as official marks.

What the Vancouver Sun article does not discuss is the proposed legislation now before Parliament which we discussed in an earlier blog and which, if enacted, will extend the power of VANOC even further.

getafirstlife.com Gets a Legal Nod

We previously reported on the Canadian law regarding parodies of trademarks. Parodies of websites and domain names can be a more complex issue but it seems that some targets actually have a sense of humour.

Recently the website getafirstlife.com, created by Vancouver based blogger Darren Barefoot and parodying the website of the increasingly popular “metaverse” of secondlife.com created by San Franciso based Linden Lab, has been given the go ahead from Linden Lab’s lawyers. Second Life is a 3-D virtual world entirely built and owned by its residents with its own economy and a currency referred to as Linden Dollars (L$), prompting residents to question the legal status of their virtual currency in the real world.

Getafirstlife.com imitates the look of the website for Second Life’s virtual world and uses a logo that’s a modified version of Second Life’s logo. A link on the getafirstlife.com website invited cease-and-desist letters, the type lawyers often send threatening legal action against website parodists. In response, Linden Lab’s lawyers sent a humorous “permit and proceed” letter claiming “Linden Lab objects to any implication that it would employ lawyers incapable of distinguishing such obvious parody. Linden Lab is well-known for having strict hiring standards, including a requirement for having a sense of humour, from which our lawyers receive no exception.” The letter also grants Barefoot a “nonexclusive, nontransferable, nonsublicenseable, revocable, limited license” to use the modified logo on T-shirts he sells.

Barefoot acknowledged that the “permit and proceed” letter was “of enormous credit to the company”. Second Life have registered 3 million new account holders in the last four months.

Olympic Trademark Legislation

The Canadian government has now come forward with new legislation to prevent unauthorized persons from marketing their wares and services in association the 2010 Olympic and Paralympic Winter Games. As noted in an earlier blog, similar legislation has been introduced prior to other Games, including legislation introduced by Italy prior to the 2006 Turin Winter Games.

The Olympic and Paralympic Marks Act (Bill C-47) received a first reading in the House of Commons on Friday, March 2, 2007. Most importantly, section 3 of the Act prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, an Olympic or Paralympic mark or a mark that resembles an Olympic or Parlympic mark. Note the reference to “in connection with a business”. Schedules 1 and 2 of the Act set out lists of the Olympic and Paralympic trademarks.

There are exceptions to this prohibition, including, of course, use by the Canadian Olympic Committee and Canadian Paralympic Committee and persons acting with their consent, but also excused are owners or licensees of marks that were being used prior to March 2, 2007.

Section 3(5) of the Act specifically allows for use of the Olympic trademarks in news reports and “for purposes of criticism”.

Section 4 of the Act prohibits anyone from promoting or otherwise directing public attention to a business in such manner as to lead the public into believing that there is a connection with the COC or CPC. A court must take into consideration the use of a combination of the expressions set out in Part 1 of Schedule 3 of the Act (Games, 2010, Twenty-ten, 21st, Twenty-first, XXIst, 10th, Tenth, Xth, Medals) or a combination of an expression in Part 1 of Schedule 3 with any of the expressions in Part 2 of Schedule 3 (Winter, Gold, Silver, Bronze, Sponsor, Vancouver, Whistler).

Potential remedies include injunctions (in respect of which irreparable harm need not be proved), damages, punitive damages, publication of corrective advertisements and destruction of wares.

The Act includes a “sunset clause” such that Schedule 2 is repealed on December 31, 2010. In the interim, and assuming the legislation is passed, it will be interesting to monitor just how effective the legislation proves to be.

Access To WHOIS Information To Be Restricted?

A story on law.com today states that the Internet Corporation for Assigned Names and Numbers (ICANN), which controls the registries for domain names with the popular .com, .net and .org top level domain extensions, will likely be voting in September on a proposal to limit the public availability of WHOIS information. This proposal has sparked a battle between trademark owners and their legal representatives on the one hand, who favour more disclosure, and privacy advocates on the other, who favour less disclosure.

The ICANN council is considering three options: Continue to let domain name owners’ personal, technical and administrative contact information be viewed by all Internet users; display only the name and country of an owner and allow that person or entity to designate additional information for a point of contact; or keep the current system and allow owners to cloak contact information only if there’s a risk to a registrant’s personal safety.

 See our post of February 27, 2007 for details on the status of the proposal to restrict public access to WHOIS information of registrants of .ca domain names.

UDRP Decisions UP, CDRP Decisions Down

The National Arbitration Forum (NAF), a leading dispute resolution service provider for domain name disputes, reports that the number of dispute resolution proceedings it handled involving domain names rose significantly in 2006, with a 21% increase over the number of disputes that it handled in 2005. The majority of cases involved domain names with the popular .com, .net, .org top level domains, which are handled under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Contrast that with the situation in Canada, where the number of CDRP (Canadian Internet Registration Authority Domain Name Dispute Resolution Policy) decisions in 2006 handled by all dispute resolution service providers involving the .ca country code top level domain actually fell from the number of such decisions in 2005, despite the continuing and increasing growth in the number of .ca domain name registrations.

Keep in mind that NAF also handles disputes over other less popular top level domains, such as .biz, .info, .pro and .mobi, as well as a number of country code domains, including .us, .tv and .cc (but not .ca domain names), which may account for some of its increased activity, however the bulk of its work continues to be disputes under the UDRP.

Update on CIRA’s new WHOIS Policy

From the Minutes of the Canadian Internet Registration Authority (CIRA) Board of Directors Meeting held January 30, 2007:

“6. Update on WHOIS

K. von Arx updated the Board of Directors on the WHOIS implementation plan noting that staff had finalized the amendments and additions to CIRA’s Policies, Rules and Procedures necessary to implement the WHOIS privacy protections for individual Registrants. The technical implementation of the WHOIS, namely ceasing to display personal information of individual Registrants in the WHOIS, cannot proceed until the technical staff has time to analyze the amount of work required. The analysis will be prepared by March 2007 once the Membership Authentication project and changes to the Election software are completed.” 

See our posting of August 22, 2006 which discusses the proposed changes to CIRA’s WHOIS policy and the implications of those changes. From the above Board minutes, it sounds like this will become reality in the next few months.

Parodies of Canadian Trademarks

An earlier blog reported that the organizers of the Beijing 2008 Olympic Games have threatened legal action against pranksters who mock the Olympic brand through the use of spoofs or parodies on the Internet.

We do not propose to comment on trademark law in China. However, a review of the Canadian law indicates that in the Canadian trademark context, legal actions against pranksters poking fun, even with malice, are not likely to be successful. The Canadian Trade-marks Act is of little assistance if the pranksters do not use the marks for a commercial purpose or if the marks have been humourously altered to the extent that it is apparent to the average person that the parodies are not the work of the trademark owners.

In bringing an action the trademark owner must prove that there has been, pursuant to section 22 of the Trade-marks Act (the “Act”), a depreciation of the goodwill attaching to the owner’s registered trademark. Given the wording of section 22, there must also be commercial use of the mark.

In the leading case of Cie Générale des Éstablissements Michelin-Michelin & Cie v. C.A.W. – Canada (1996), 71 C.P.R. (3d) 348 (F.C.T.D.) (“the Michelin case”), the defendant attempted to unionize the workers of Michelin North America (Canada) and handed out pamphlets to employees parodying the Michelin corporate logo, namely the Michelin Tire Man, a beaming marshmallow-like rotund figure composed of tires. The pamphlets depicted a broadly smiling Michelin Tire Man with arms crossed, his foot raised, seemingly ready to crush underfoot an unsuspecting Michelin worker together with the caption, “Bob, you better move before he squashes you”.

The Court held that handing out pamphlets to recruit members into a trade union did not qualify as a commercial activity (i.e. use in association with wares or services) under section 4 of the Act. Moreover, the use of the trademark as a parody could not be said to depreciate the goodwill of the registered mark under section 22 because the menacing depiction was not likely to confuse the average customer that the altered mark originated with the registered owner. It is worth noting, however, that the plaintiffs were successful with their claim of copyright infringement in respect of which the Court ruled that parody was not a form of criticism, a defense to copyright infringement under what is now Section 29 of the Copyright Act.

The Michelin case was followed in British Columbia Automobile Assn. v. Office and Professional Employees’ International Union Local 378 2001, BCSC 156. This was another labour relations situation where the Court ruled that the use by the defendant of the plaintiff’s trademark for the non-commercial provision of information on the Internet did not constitute depreciation of the goodwill of the registered trademark even though one of the purposes of the website was to discourage members of the public from doing business with the plaintiff. The defendant was entitled to express its position and speak freely provided it did not violate section 22 of the Act and that “to accept the plaintiff’s argument, that the reference to an employer’s trade-mark to identify a Union site depreciates goodwill associated with that trade-mark would be a result that goes far beyond what Parliament intended by s. 22”.

An earlier case provides an illustration of a true commercial use. In Source Perrier (Société Anonyme) v. Fira-Less Marketing Co. Limited [1983], 2 F.C. 18 (T.D.), the defendant sold bottled water for $1.00 under the name “Pierre Eh”, a humourous reference to the Canadian Prime Minister at the time. The bottles were designed to resemble those used by the plaintiff, but included a disclaimer that the bottles were not to be confused with those of the plaintiff.  The Court found that this use led to depreciation of the plaintiff’s goodwill because the defendant’s commercial spoof of the plaintiff’s marks and image tended “to dilute the quality of the plaintiff’s trade-marks, to impair its business integrity established over the years, and to cause injury to its goodwill”.

Thus, trademark owners, before pursuing pranksters, will want to determine whether there is commercial use of a registered trademark, or, possibly, an infringement of copyright. Otherwise, the trademark owner may be forced to see (and live with) the humourous side of a prankster’s efforts.