Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Vogue’s publishers have rappers Drake and 21 Savage for unauthorized use of Vogue’s trademarks and false representations in marketing their newest album, “Her Loss”. This follows Vogue’s controversial asking a small English pub called “The Star Inn at Vogue” to change its name.

Condé Nast, the owner of Vogue Magazine, filed a for trademark infringement and false advertising against Drake and 21 Savage on November 7, 2022, in the United States District Court after the artists released a parody promotional cover of the widely acclaimed Vogue Magazine, featuring a photo of Drake and 21 Savage atop the Vogue logo and multiple fake story headlines. The magazine was part of a , including a fake NPR Tiny Desk Concert and a fake Saturday Night Live performance. Drake and 21 Savage jointly promoted the fake magazine on their Instagram with the caption:

“Me and my brother on newsstands tomorrow!! Thanks @voguemagazine and Anna Wintour for the love and support on this historic moment”

The artists also mimicked Vogue’s promotional activities by distributing copies of the fake magazine in North America’s largest metropolitan areas, including New 91��ɫ, Los Angeles, Atlanta, Miami, Houston, and Toronto, and plastering posters of the counterfeit cover along streets and buildings in these cities.

This lawsuit followed a week of repeated demands to Drake and 21 Savage from Vogue and its counsel to cease their allegedly infringing activities and take remedial actions to curtail further public confusion. Given that the artists refused to take action and continued to benefit from the social media posts, Vogue requested and was immediate injunctive relief to prevent Drake and 21 Savage from using fake covers to promote their album. This injunction also prevents Drake and 21 Savage from using Anna Wintour’s likeness, including a doctored photograph of Vogue’s long-serving editor-in-chief and Drake, a full-page feature in the fake magazine. Vogue also requests statutory damages of up to $4 million US, though the court has yet to address these damages.

Though the post containing the counterfeit magazine was taken down from Instagram and the posters of the counterfeit cover along streets and buildings were removed because of the injunction, distributed copies of the fake magazine remain and are now being sold for upwards of on e-commerce sites. Ample evidence demonstrates that this false representation caused confusion, including various online articles from which claim that Drake and 21 Savage landed the December Vogue cover and social media posts indicating users’ excitement for the fake cover.

U.S. District Judge Jed Rakoff agreed with Vogue and Condé Nast that there was sufficient proof that consumers were being confused and the publisher had been "irreparably harmed”, a temporary injunction for the production and distribution of the fake magazine. On Drake and 21 Savage agreed to this preliminary injunction and also agreed to stop using Vogue trademarks for their album promotion.

The counterfeit marketing that went into promoting “Her Loss” may have paid off, with the album reaching during its first week and a . However, it is unclear if these sales can offset the potential damages of up to $4 million US requested by Vogue and other remedies that NPR and NBC may seek for the artists’ fake Tiny Desk and Saturday Night Live performances, respectively.

(Photo Credits:��) (Alt text: Screen capture of Drake’s now-deleted Instagram post containing multiple copies of the impugned magazine cover)

The post Drake and 21 Savage May Have More (Legal) Issues Than Vogue appeared first on IPOsgoode.

Sally Yoon is an IPilogue Writer, IP Innovation Clinic Fellow, and a 3L JD Candidate at Osgoode Hall Law School.

How similar is too similar? Television producers need to be careful to ensure that they are not mimicking real-life businesses too closely to offer their fictitious shows some realism. According to , AMC Networks and Sony Pictures, the production companies behind Better Call Saul, are being sued for trademark and trade dress infringement by Liberty Tax. The tax company claims that the producers and film studios “decided not to be original at all” and “rip off” of its trademark which has been in use for over 25 years.

The episode in question (Season 6, Episode 2) portrays a business called “Sweet Liberty Tax Services,” shown below. The fictitious business is run by Betsy and Craig Kettleman, who embezzle money by taking advantage of their clients who do not understand the tax system. The real-life tax company "Liberty Tax" claims that the show copied its logo and style, including the Statue of Liberty, which is a frequent identifier of the company.

Photo retrieved from The Wrap

The is no stranger to trademark infringement issues.��Audiovisual professionals know to be especially careful whenever trademarks are displayed on screens. However, production teams can defend their works against claims of trademark infringement. Among these avenues are demonstrating that the trademarks are being used in an “indicative manner” or a “mere accessory,” instead of for identifying goods and services. Camerawork plays an important role in achieving that the trademarks blend into the scene’s overall ambience. For example, to mitigate trademark infringement risks, directors may take active measures to prevent fixed close-ups or give too much screen time to one particular trademark over another.

All that said, a trademark does not necessarily have to be displayed visually to trigger a trademark infringement lawsuit. After the release of “Black Mirror: Bandersnatch” in 2018, , a children’s book publisher known for their ‘game books’ titled Choose Your Own Adventure. As an interactive film, Bandersnatch viewers could take control and make decision for the protagonist, Stefan Butler, as he navigates a series of disturbing events. By adopting the unique narrative structure of its books and using the specific phrase “Choose Your Own Adventure Book,” Chooseco accused Netflix of willfully infringing its trademark and ultimately tarnishing the series’ child-friendly reputation. Netflix eventually settled with Chooseco in late 2020 after unsuccessfully arguing on grounds related to trademark law and fair use allowances.��

Moreover, in 2020, Netflix's movie "Enola Homes" was the by the estate of Sir Arthur Conan Doyle over “similarities to existing Sherlock Holmes material.” The estate argued that the film depicted a version of Holmes that was not yet in the public domain, illustrating how IP infringement issues can arise when films are based on works still under copyright protection.

Liberty Tax’s recent lawsuit shows that minor alterations to fictitious names may not be enough to bypass trademark infringement issues – not so “sweet” anymore for the “Better Call Saul” team.

The post “Better Call Saul” Episode Sparks “Sweet” Trademark Infringement Lawsuit appeared first on IPOsgoode.

Serena Nath is an IPilogue Writer and a rising 2L JD candidate at Osgoode Hall Law School.

Typically, the name “Vogue” evokes the highly popular fashion and lifestyle magazine or the song “Vogue” by Madonna. But the original “Vogue” actually refers to the in Cornwall, and named after this village is a pub. However, for Condé Nast, the publisher of Vogue the magazine, having a pub called “Vogue” was an issue.

Vogue, the village pub, has existed for approximately 200 years and Vogue, the magazine, has only existed for about 130 years. Yet to ask Vogue, the pub, to change its name. In a letter sent to the pub at the beginning of May 2022, Conde Nast threated to sue the pub over its name, stating that Condé Nast is the proprietor of the Vogue mark. Condé Nast claimed that the pub’s name could “cause problems” because people may become confused and associate the pub with the magazine. The letter also stated that the pub manager had to reply within seven days, otherwise Condé Nast would take remedial action.

The pub manager, Mark Graham, was not terribly bothered by the letter, and in fact found it “hilariously funny.” In , Mr. Graham helpfully pointed out that the pub predates the magazine and the village is even older than the pub. Further, when the name “Vogue” was chosen for the magazine, Condé Nast did not seek permission from the village, the “real Vogue” as Mr. Graham states, to use the name. In the end, Condé Nast offered the pub an apology, admitting that Mr. Graham was correct and that they in this instance.

This case, a clear David versus Goliath situation, illustrates key access to justice issues in intellectual property law, and even more generally, in law as a whole. Although this case ended up in victory for the small pub, before Mr. Graham sent a reply to Condé Nast, he considered submitting a counterclaim. If he had countered the claim, it would have likely been a lengthy battle in which the pub may not have been victorious, despite both the village and pub existing long before the creation of “Vogue” the magazine. Condé Nast clearly has many more resources to help them fight such a battle. This case could have led to including, but not limited to, the pub running out of financial resources midway through litigation or the pub feeling pressured into a settlement. Sometimes a non-legal response can be the way to resolve these issues and avoid a costly legal problem for either party.

The post Who Wins in the Battle of Vogue, the magazine, (David) versus Vogue, the pub (Goliath)? appeared first on IPOsgoode.

What does the colour red, an in-store family diner, and Zeddy the teddy bear remind you of? For me, it is Zellers – the discount department store that will always be a fond memory of my childhood. Today, it is at the centre of a lawsuit initiated by the Hudson's Bay Company (“HBC”).

On October 5, at the Federal Court of Canada against a Quebec family for trademark infringement, depreciation of goodwill, and passing off.

The Zellers Trademark: Then and Now

Zellers has been around since the 1930s, but in 1978, it was acquired by HBC. In 2013, the chain of Zellers stores officially closed. However, by the Canadian Intellectual Property Office on September 24, 2020 for failure to renew. This registration covered, among other services at Zellers, the overall “operation of department stores”. However, HBC retains other registered marks, such as the , , and the .

Earlier this year, on April 26, a for its design mark, identical to that of HBC’s expired mark, for services including “Computerized on-line ordering and trading featuring general merchandise and general consumer goods”.

Shortly thereafter, on June 30, for its design mark covering “Retail department store services, [and] On-line retail department store services”. This recent registration may have to do with in one of its stores located in Burlington, Ontario.

HBC’s Claim of Trademark Infringement

HBC presumably relies on its remaining registered marks to argue that Zellers Inc. is contravening : “No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto”.

The Supreme Court of Canada (“SCC”) in provided four factors to consider in a s. 22 claim: (1) use of the registered mark; (2) proof of goodwill; (3) the likely connection of linkage made by consumers between the claimant’s goodwill and the defendants’ use; and (4) the likelihood of depreciation. In Veuve Clicquot, the claimant’s s. 22 claim had been rejected at trial, and the SCC agreed. Veuve Clicquot did not establish that the respondents had used sufficiently similar marks to lead consumers to make a mental association between the two marks that would likely depreciate the value of the goodwill attaching to the Veuve Clicquot mark.

In HBC’s case, the department store marks are yet to be examined; so s. 22 is inapplicable to them. Whether the remaining niche marks have enough of a reputation to satisfy the Veuve Clicquot Ponsardin criteria remains to be seen.

HBC’s passing off allegation must rely on : “No person shall direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services or business and the goods, services or business of another”. In ., the SCC outlined the three elements that must be established by a plaintiff to succeed under s. 7(b): (1) the existence of goodwill; (2) deception of the public due to a misrepresentation; and (3) actual or potential damage to the plaintiff.

In HBC’s case, if it were to base the existence of goodwill on its Zellers pop-up alone, its argument under the first prong of the Kirkbi test would be weak. However, goodwill may continue even where a business has ceased to operate (see at para. 59). HBC’s remaining registered Zellers marks may also have continuing goodwill. If so, consumers would likely infer that any products purchased from Zellers Inc. are sold by HBC’s Zellers.

In , the damage suffered by the plaintiff from the defendant’s use of an identical name was the loss of control of its trade name in Canada. HBC could similarly argue that would cause damage to HBC in its loss of control over the Zellers brand and the loss of future customers.

Stay Tuned

Although we are only in the early stages of HBC’s lawsuit, we may be in for a trip down memory lane!

The post Zealous Advocacy for the Zellers Trademark: A Look into HBC’s Pending Lawsuit appeared first on IPOsgoode.

Photo by ()

Meena Alnajar is an IPilogue Writer, IP Innovation Clinic Fellow, and a 2L JD Candidate at Osgoode Hall Law School.

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On , The Hershey Co. chocolate company (“Hershey”) filed a lawsuit against Californian cookie maker The Cookie Department Inc. (“Cookie Department”) for copying Hershey’s famous Kisses shape. The design of Hershey’s cone-shaped small chocolate “Kisses” has been a registered trademark with the United States Patent and Trademarks Office (USPTO) . Hershey alleges in their complaint that Cookie Department released for cookie products with the same conical shape. Cookie Department rejects this claim, stating that the shape used was the When it comes to food designs, how far can a trademark go?

This case is one of many battles between Cookie Department and Hershey. , Cookie Department accused Hershey-owned company One Brands LLC of copying one of their trademarks in a California federal court lawsuit. One Brands sold a product labelled “Tough Cookies Only” which Cookie Department argued infringed on its “Tough Cookie” trademark. In response, on August 28, Hershey sent a cease-and-desist order on its Kisses trademark, which led to the September 28 lawsuit.

Hershey’s Kisses trademark may not be considered inherently distinctive since Kisses look like any other chocolate chip on the shelf, making Hershey’s Kisses a rather than a mark registrable on the USPTO’s . Under U.S. trademark law, a is a common reason for the USPTO to reject a trademark registration—so how was the possibly indistinctive Kisses mark registered?

Hershey’s Kisses trademark has of 7/8 of an inch in height and 15/16 of an inch in diameter, perhaps to ensure the Kisses are a distinct shape in comparison with other smaller chocolate chips on the shelf. In establishing a potentially such as the Kisses’ specific dimensions, the trademark could be eligible for registration due to its inherent distinctiveness.

A trademark can be so long as it indicates the source of one’s goods and services; shapes are often deemed as or “” trademarks. Some choose to register shapes because they are fast, visual s. Further, registering a specific shape ensures that if another business requires said shape, they can only go to one maker. However, the exclusive rights over a shape can prove problematic. For example, in 2019, Hershey’s Kisses were manufactured leaving many bakers upset by the quality. Yet, bakers likely had no other option but to utilize Hershey’s broken Kisses, because no one else could make them without being subject to a possible trademark infringement suit.

The current Cookie Department and Hershey battle does not appear to have a clear winner. Hershey’s recent lawsuit requires examining whether The Cookie Department’s use of the chocolate chip symbol could create a as to which brand, Hershey or Cookie Department, is the source of the Cookie Department product. On the one hand, Cookie Department argues that they have with the Hershey’s Kisses product line. Therefore, there may only between the two marks. In addition, the chocolate chip’s shape is a for over eighty years. With this level of , Cookie Department may challenge the overall validity of the Hershey’s Kisses mark. Further, Hershey did not complain about Cookie Department’s products that used chocolate chips until Cookie Department filed the first complaint. The current complaint could therefore be conceived as , rather than protective of the Hershey’s Kisses trademark.

Conversely, Hershey is a well-known brand, first establishing and now having many registered marks to further protect its popular confectionary designs. The specific dimensions and widespread marketing can lead consumers to associate a particular chocolate chip shape with the Hershey brand, therefore possibly constituting of Hershey’s Kisses, affirming the mark’s validity, and warranting Hershey’s broad scope of trademark protection in this lawsuit. With justifications for both parties use of a chocolate chip mark, this case highlights the challenges of creating a strong, delicious, and distinctive non-conventional trademark.����

The post Let the Chips Fall Where They May: Hershey Sues Californian Cookie Maker appeared first on IPOsgoode.

Photo from Nike

Alexandria Lewis & Ian Rothweiler are JD Candidates at Southwestern Law School. This article was originally written as a requirement for Victoria Burke and John Begakis’ course on Fashion Law.

Trademark Infringement / Anti-Dilution – Nike v Warren Lotas

Warren Lotas partnered with Jeff Staple to "reinterpret" Staple’s original 2005 collaboration with Nike on the classic Nike Dunk shoe. Nike wasted no time and quickly filed a trademark infringement and anti-dilution lawsuit. The shoes and respective trade dress were nearly identical replicas of the original Dunks, so Nike had a strong case that the Lotas shoes were likely to confuse the general public as to their origin, source, sponsorship, or affiliation with Nike.

As a defense to the trade dress rights infringement claims, Lotas claimed that the tread on the sole of the shoes served a utilitarian function because they are essential to their use and purpose, and thus the quality of the sole.

Staple, who has a history of working for Nike and is the registered owner of the Staple Pigeon brand (seen on Lotas shoes), was left out of the litigation between Nike and Lotas. This is strange, as he was a co-partner in the Lotas product and his trademark pigeon is part of the trade dress of the allegedly infringing shoe. Lotas effectively received constructive approval from Staple to go forward with the Dunk lookalike.

Not only was Nike seeking injunctive relief to enjoin Lotas from selling the allegedly infringing sneakers, but also monetary damages. It is hard to imagine that the existence of these sneakers will damage Nike’s brand (worth $160 billion) enough to warrant monetary damages. The unfortunate reality for Lotas is that Nike has unlimited resources to take on nonstop litigation against designers, manufacturers, and distributors to protect their trademarks. This creates a chilling effect that moves up the supply chain, instilling fear of a pending Nike lawsuit among all involved parties. If trademark law ultimately serves to protect the consumer, do these disputes really put the consumer at risk or is Nike just flexing their muscles and depriving many would-be purchasers of new and potentially more appealing designs because they can?

Photo from MSCHF

Trademark Infringement - Nike v MSCHF

MSCHF, the Brooklyn-based art collective known for distorting the look and feel of well-known products and services, employs several risqué and even arbitrary design methods. Just look at its squeaking rubber chicken bong and YouTube channel presenting videos of a vat of mayo or a photograph of Pete Davidson. Needless to say, MSCHF reimagines popular items and brands to offend more conservative sensibilities.

In early 2021, MSCHF leaned into its disruptive attitude by collaborating with rapper Lil Nas X to craft 666 pairs of Nike Air Max 97 shoes with a Satan-themed twist. The expensive sneakers featured an inverted cross and a bronze pentagram charm embossed with “LUKE 10:18”, a Bible verse which reads “I saw Satan fall like lightning from heaven”. The design model was thought up to promote the Old Town Road artist’s devil-themed music video, Montero (Call Me by Your Name), as well as to increase awareness about MSCHF’s wicked genius.

Most Nike enthusiasts were bummed when the shoes sold out within 60 seconds. Religious or spiritual beliefs aside, so-called “sneaker heads” wanted a pair of rare 97s containing a drop of human blood in the sole.

While progressive critics praised MSCHF’s devilish design, Nike sued MSCHF for trademark infringement. Nike alleged confusion and deception surrounding the shoes’ source because MSCHF’s use of the iconic Nike swoosh implied authorization. Nike also alleged dilution by trademark tarnishment, as enraged customers boycotted original Nike products, hurting their pockets and long-held goodwill with consumers.

Nike obtained a permanent injunction order restricting MSCHF’s production, promotion, and sale of ‘Satan Shoes’. Nike also ordered all attorney fees and profits collected from shoe sales, reaping all the benefits of MSCHF’s creative, albeit mischievous work.

Unsurprisingly, Nike didn’t react with the same disapproval toward MSCHF’s ‘Jesus Shoes’ which had dropped earlier. Celebrities as well-known as Drake sported them. This seems to be due to Christian imagery not holding the stigma that Satanist imagery does today. Nike seems to sue for trademark infringement subject to society’s tolerance of alternative views, and MSCHF exists to push our boundaries.

The post A Brief Recent History of Nike’s Trademark Battles appeared first on IPOsgoode.

Photo by (Unsplash)

Claire Wortsman is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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From the thrilling gold-medal finish of the women’s soccer team to Andre De Grasse becoming the first sprinter to bring home gold since 1996, there was no shortage of exciting moments for Canadians at Tokyo 2020. Penny Oleksiak made history as the country’s most decorated Olympian of all time. Jamaica’s Elaine Thompson-Herah also made history in Tokyo as the first woman to win gold in the 100 and 200 meters in consecutive Games. After posting footage of her impressive feat and her family’s celebration to Instagram, Thompson-Herah was, as she , “blocked on Instagram for posting the races of the Olympic because [she] did not own the right to do so.” The New 91��ɫ Times that a spokesperson for Facebook, Instagram’s parent company, confirmed that it removed Thompson-Hera’s video but claims her access to the app was mistakenly suspended.

The International Olympic Committee (IOC) athletes to share Olympic Games content on their personal social/digital media accounts or website unless it contains audio/video of the areas referred to as the Field of Play (“the area used for a sporting competition or ceremony”) or Back of House (“non-public areas, within and/or surrounding a venue”). IOC regulations are only one of the many sets of rules that surround the intellectual property (IP) of the Olympic Games. James Bikoff, who has extensive experience litigating the IOC’s trademarks, on an episode of that, depending on the country, Olympic IP can be protected by national statutes (see �䲹�Բ��岹’s ), the (which Canada is not a contracting party to, but are), and special protection for the words “Olympic” and “Olympiad” in various languages across the generic top-level domain names (e.g. .com, .org).

�䲹�Բ��岹’s Olympic and Paralympic Marks Act (OPMA) was enacted in 2007 and includes a list of 39 protected Olympics-related marks in Schedule 1. Although one might think that this statute contains all of the necessary information on Olympics-related marks in Canada, matters are further complicated by the fact that the Canadian Olympic Committee (COC) continues to register marks not found in OPMA as official marks under the . Teresa Scassa �䲹�Բ��岹’s official marks system – which allows “public authorities” to sidestep the application and review process otherwise required�� – ��as “anomalous and downright dysfunctional.” The result of COC’s registering of official marks is that certain marks (e.g. ) enjoy simultaneous protection as official marks and under the OPMA, and may continue to receive protection under one after being removed from the other. Another odd result is that certain marks (e.g. the ) are protected as an official mark but not under the OPMA, which may present difficulties as certain businesses look to the OPMA to check their compliance. ��

Canada is not alone in facing criticism for its extensive protection of Olympics-related IP. During her time as a trademark law professor at Drake University, Shontavia Johnson wrote that she the laws created solely to protect the Olympics had been stretched too far. She described her concerns, which include the high level of difficulty for companies, especially small businesses, to know when their activities are illegal and obtain permission to do the right thing. Johnson also explained that most American Olympic athletes scramble to make a living, and that the IOC and national Olympic committees exercise a tight control which may prevent athletes from profiting off of the value which they create for the Olympic Games.

restricts social media posts and advertisements published by athletes and sponsors during the Games, both in volume and content. These restrictions on permitted publications may deter smaller companies who cannot afford to become official Olympic sponsors but who would gladly sponsor an individual Olympian from doing so, either because they feel it would result in an unsuccessful campaign or because they are afraid of accidentally breaking the rules. In Canada, even to congratulate an athlete they sponsor, companies are not permitted to use a multitude of hashtags or words that generate social media buzz, including Tokyo 2020, Olympics, #teamcanada, and #summergames. ��

In light of the popularity of Olympians posting on social media platforms like during Tokyo 2020, it will be interesting to watch for potential clashes between athletes and governing bodies related to IP at Beijing 2022. As social media posts generate buzz and draw fans, spectators will have a chance to enjoy getting behind-the-scenes looks and instant updates from their favourite athletes. This may drive some policy changes. On the other hand, Michael Lynch, a veteran sports marketer, IOC’s IP as its “primary asset.” Striking a balance between generating ample revenue to support athletes and events and serving the interests of individual athletes, sponsors, and fans seems an Olympic balancing act.

The post Intellectual Property Protections of Olympic Proportions: A Look at Tokyo 2020 appeared first on IPOsgoode.

In November 2008 and April 2012, Toronto Police Services executed a criminal search warrant at Dr. Flea’s Flea Market, leading to over $1 million of counterfeit merchandise being seized – some of which included Louis Vuitton products. Unfortunately, the flea market did not learn from its past mistakes. In November 2015, The Fashion Group Couture Group – a vendor operating out of Dr. Flea’s Flea Market – was once again caught selling counterfeit Louis Vuitton products. The well-known fashion brand is now seeking compensation from the landlord of the flea market for��negligence, vicarious liability, and (as will be focused on within this article) intellectual property infringement.

Unfortunately, lawsuits involving intellectual property infringement are certainly not unheard of in the fashion industry. From , to , intellectual property rights remain a significant issue for both corporations and individuals. However, what makes this lawsuit different from any other infringement within the industry?

It is common practice for brands to bring lawsuits against the��vendors of counterfeit products. However, bringing lawsuits against the landowners of retail space is a relatively new legal phenomenon in Canada. The ability to hold landlords accountable for their vendors’ activities has��already been established and legislated��under U.S. law. Canada, however,��has never��implemented regulations in this area, and is behind its southern neighbour.

One of the few guiding cases is In this case, the defendant was found by the Court to have infringed the rights of Chanel Inc., which holds the licence to use Chanel trademarks in Canada. Pursuant to����of the��, the Court granted: declaratory relief confirming the validity and ownership of the Chanel trademarks, injunctive relief precluding the subject defendants from continuing their infringing activities, and injunctive relief requiring the delivery up and destruction of any remaining infringing goods within twenty-one days of the original judgment. Ultimately, the federal judge ordered the landowner selling the knock-off goods to pay over $300,000��in compensation. However, without many cases in this area, the fate of Dr. Flea’s Flea Market is still subject to debate.

Landowners have argued that consumers are not necessarily cleared of responsibility either when it comes to purchasing counterfeit products. The gives tips on how to ensure that the product the consumer is buying is not counterfeit or pirated. Further, the website outlines the necessary steps if one suspects a bought product is illegitimate. For example, visiting the further warnings and information. Such caution signs include, but are not limited to, bargain prices, incorrect logos, and/or the lack of a certification label. Ultimately, landowners claim that it is extremely difficult to even tell the difference between authentic and counterfeit products. They argue that the consumers should be held accountable for purchasing the knock-off goods, and inadvertently funding organized crime.

Although this lawsuit is just beginning, one thing is assured: if Louis Vuitton successfully sues the owners of the flea market,��Canadian brands will now have an extra tool in protecting themselves against infringements involving intellectual property. With more at stake for landowners, this increased responsibility��will hopefully encourage landowners to better regulate the products that their vendors are selling. The question remains, is this enough to end the fight against counterfeit products?

Giuseppina D’Agostino, founder and director of IP Osgoode, commented on this lawsuit in a recent stating that, “Should the case be successful, it would increase pressure on landlords to monitor their tenants… [however] those changes will be toothless without enforcement.��You can have whatever contract written down, whatever law, whatever lawsuit, if it’s not enforced, the problem proliferates. […] I think it may change some behaviour in terms of landlords being more judicious in who they lease their space to but long term I don’t think it will really address the bigger problem of infringing merchandise.”

The reality is, even with a successful precedent set by this case, the need to codify reform in this area of law remains pressing. If one thing is certain, however, it is that no one��can��“flea” from Louis Vuitton,��not even the local flea market down the road.

Alessia Monastero is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

The post Can’t “Flea” from Louis Vuitton appeared first on IPOsgoode.

The Game So Far

The story begins with ��In Harjo the TTAB decided to cancel six of the Washington team’s trademarks, determining ��that the marks “may disparage Native Americans and may bring them into contempt or disrepute.” However, as noted by attorney and professor , the decision was overturned on appeal in 2003. Fast-forward to 2014 and the play has been run again. On June 18th, the TTAB issued the Blackhorse . Once again, six trademark registrations issued between 1967 and 1990 for the Washington football team’s marks containing ��the term “redskins” were cancelled “because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, .”

Section 2(a) of the provides that a trademark can be refused registration if it consists of "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The principle point of conflict for the plaintiffs was the racist nature of the term “redskin.”��According to news reports, ��released the following statement: “The team’s name is racist and derogatory. I’ve said it before and I will say it again - if people wouldn’t dare call a Native American a “redskin” because they know it is offensive, how can an NFL football team have this name?”

“And Just Like Last Time, Today’s Ruling Will Have No Effect…”

On the other side of the field Bob Raskopt, the team’s attorney, issued a ��saying: “We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.” So why does Raskopt seem so confident? Well firstly, the asserts that the evidence provided by the plaintiffs failed to show “that a substantial composite of Native Americans found the term “Redskins” to be disparaging in connection with [the football team’s] services during the relevant time frame.” The issue is that the evidence in question was almost identical to what was submitted in the overturned Harjo case, evidence that was found to be insufficient to uphold the cancellation order. Precedent would thus lead one to believe that the football team is likely to see ��the same victorious end result as Harjo when they appeal.

If, however, Raskopt is unsuccessful on appeal, the team will lose the legal benefits of federal trademark registration. As described by the USPTO’s official���� on the matter, lost benefits would include no longer having legal presumptions of ownership or rights in the marks, and no longer being able to stop the importation of infringing or counterfeit goods. According to ,��since the football team would have far less protections from other businesses exploiting their name (ex. in merchandise or apparel), in theory millions of dollars could be lost.

However, the team will not see money fly out of the bank just yet - they still have exclusive use of the logo and existing contracts for the production of “Redskins” products will not be nullified by the cancellation. Most importantly, the TTAB force the team to change its name or marks. If the team does decide to continue using the “Redskins” moniker, ruling and public opinion aside, the state and common laws of where the team does business may provide trademark protections. An attempt to enforce exclusivity could also be made using Section 43 of the , which allows for civil action against those who use a word, symbol, name etc. in a confusing way that may connect to and subsequently damage another entity. Thus, remedies still exist for the football team if the registrations are lost after the appeal.

But is a Moral Victory Enough?

As it stands the football team does not need to change its name, may still be protected under state and common laws, will not see any immediate economic losses, and could seek exclusivity under Section 43 of the Lanham Act. So, after the whistle is blown, did the plaintiffs win anything more than a thumbs-up from the TTAB?��While a moral victory does not have the same legal repercussions as may be desired by the plaintiffs, it does represent a growing trend in public opinion against derogatory names and symbols in sports that could force even the most ��mind to change. And this public opinion has been voiced fairly loudly. News sources have reported that��fifty U.S. senators ��to NFL commissioner Roger Goodell, asking him to recommend a name change for the team, that newspapers like the San Francisco Chronicle have they will stop printing the name “Redskins” when referring to the football team and that even ��has even weighed in on the issue, saying he would consider changing the team’s name if he knew it offended a large group of people.

It is not yet known how the negative publicity triggered by this case may impact the value of the team’s trademarks, registered or not. Diehard fans may not be swayed to stop buying merchandise, although blogger Jeremy Phillips made a good point in suggesting that the value of a brand lies in the worth given to it by the consumers of the goods and services for which the mark is used. A mark that has been publically denounced as disparaging to Native Americans may not be so valuable to future buyers of the team’s merchandise.

In Conclusion

The play is paused as we wait for the appeal to be heard, but even if the plaintiffs leave the field with the win - nothing but public pressure really has the ability to have the word “redskins” benched for good. It remains to be seen if this will occur, and even though I respect the loyalty many feel towards this historic brand, I know I will be in the stands cheering for a Blackhorse touchdown.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post The Washington Wrong-Skins: A Moral Victory over Tasteless Trademarks appeared first on IPOsgoode.

"Dumb Starbucks" quickly garnered the attention of coffee lovers, intellectual property lawyers and even Starbucks themselves. As one spokesperson for the Starbucks brand , "we appreciate the humor, but they cannot use our name, which is a protected trademark."

The owners of "Dumb Starbucks" wholeheartedly disagree, taking the position that their use of the Starbucks registered trade-mark is permissible. The owners of the new coffee shop that they are operating legally, as a form of parody art - functioning as an art gallery and distributing��free coffee as the "art". While "Dumb Starbucks" has since been by the Los Angeles Health Department for operating without a permit, the legal buzz it created during its brief existence will not be forgotten.

Despite its comedic intention, "Dumb Starbucks" raised serious debate about the scope and extent of parody protection in the context of trade-mark law. The heart of the matter rests on the following questions. Is "Dumb Starbucks" considered a parody? If so, would it be successful in avoiding liability under current trade-mark law?

Trade-mark Infringement and Parody

Under , infringement does not occur unless there is a likelihood of source confusion. The use of a parody argument against a claim of trade-mark infringement advances the proposition that there was no infringement in the first instance as the was improbable. Unlike the doctrine of "" in US copyright law, parody is not technically considered a defence under trade-mark law. The owners of “Dumb Starbucks” may deny a claim of infringement entirely by suggesting that by placing the word “Dumb” in front of the mark “Starbucks” they are obviously engaging in an act of parody, and are expressing their views in a form of critical social commentary.

A trade-mark infringement may nonetheless be found to occur if the public could not distinguish between the parody and the original trade-mark, or the public believes that a is associated with both the parody and the original mark. In the case at hand, it seems rather unlikely that the public would confuse the “Dumb Starbucks” establishment as originating from the same owner of the international chain of Starbucks coffee shops. For one thing, the word “Dumb” is prominently placed in front of the word “Starbucks” and is depicted in the same font, shape and size as the rest of the mark. A Starbucks��spokesperson confirmed the lack of confusion between the original and “Dumb Starbucks” by stating to a member of the press that it's “” There was no evidence that the public was duped either, thousands of tweeted about the joke and even uploaded their own pictures with novelty items from the parody coffee shop. A novelty "Dumb Starbucks" cup recently to the tune of $200 (without any "dumb coffee" in it, of course).

Weak Coffee: Does “Dumb Starbucks” Dilute the Original Trade-mark?

Considering the earlier analysis, if we assume that it would be difficult to prove trade-mark infringement, Starbucks may nonetheless decide to commence legal action based on a claim for trade-mark dilution.��Under the US��,��dilution refers to a situation whereby the owner of a��famous mark may prevent others from using their mark in a manner that would diminish its distinctiveness or reputation. The potential harm to the reputation of their trade-mark��leaves the door open for Starbucks to��pursue an action��on the basis of��dilution by tarnishment, even without proof of actual economic harm.

In the case at hand, the parody not only explicitly associates Starbucks with being "Dumb", but it also potentially associates the original mark��with low-quality products, depending on what was being served in-store. By connecting Starbucks to products of inferior quality and by��depicting the Starbucks brand in a negative light, “Dumb Starbucks” might be liable for tarnishing Starbuck’s reputation as a brand.

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