Ariel Goldberg is a 1L JD Candidate at Osgoode Hall Law School.

Usually, a dog toy’s squeak echoes throughout a home. A Jack Daniel’s bottle-shaped dog toy called “Bad Spaniels” will be heard at the U. S. Supreme Court and could bark for trademark use in expressive works. Will it bite?

Jack Daniel’s Properties, Inc.’s (“Jack Daniel’s”) petition to the U. S. Supreme Court explains that the case addresses a significant reoccurring tension in trademark and trade dress protection under the U. S.’s Lanham Act: VIP Products LLC (“VIP Products”) runs the e-commerce website . Under the shopping category “”, VIP Products sells an array of dog toys that parody existing brands’ trademarks and trade dress including a Mountain Dew bottle that reads “”, a Baileys bottle called “” and, the toy at issue, a nearly identical Jack Daniel’s Old No. 7 Brand Tennessee Sour Mash Whiskey bottle altered to say “.”

Image from .

Initially, that the “Bad Spaniels” dog toy likely causes consumer confusion and tarnishes Jack Daniel’s marks. On appeal, the decision holding that the likelihood-of-confusion test would not apply because the toy is an expressive work with First Amendment protection of freedom of speech. The Ninth Circuit applied the Rogers Test from the Second Circuit’s (1989) decision. free speech and trademark protection by allowing the use of trademarks in expressive works if artistically relevant and not explicitly misleading. Here, the trademark use was artistically relevant to the , the toy was not explicitly misleading because VIP Products altered the trade dress. The toy had a disclaimer on the back of the toy that stated that Jack Daniel’s was not affiliated.

Jack Daniel’s petition argues that the Ninth Circuit’s “” decision allowing for companies similar to VIP Products to tarnish trademarks and create mass marketplace confusion. Jack Daniel’s that the courts of appeal are divided on this issue, specifically that the Ninth Circuit’s use of heightened First Amendment Protection for humorous trademark use conflicts with the decisions of other Circuit courts. . These circuits have not used the First Amendment and instead applied the traditional likelihood-of-confusion test with consideration towards the humor or parody as a factor against the mark holder. For example, in , the Fourth Circuit held that Haute Diggity Dog’s “ successfully parodied Louis Vuitton’s handbags through applying the likelihood-of-confusion test with humour as a factor.

Essentially, Jack Daniel’s wants the U. S. Supreme Court to create a higher bar for parody works which would create more ease for mark holders to address consumer confusion and dilution from parodies. The main concern is the use of humour to gain immunity. , the academic director of Fordham University Fashion Law Institute, that “every brand with a beloved trademark is worried about seeing cheesy versions of its primary corporate asset used to sell not only dog toys, but also  a vast range of other novelties that, over time, could cheapen the perception of the brand.” In addition, that dog toys are expressive works because its purpose is to be played with by dogs.

However, the argument to raise the bar for parody works is contentious. , a professor at Harvard Law School and author of a brief opposing Jack Daniel’s , highlights that trademark law exists to protect consumers from fraudulent products rather than clear humorous uses of existing trademarks and trade dress. expressions on a canvas are not meaningfully legally distinctive from expressions on a dog toy.

The U. S. Supreme Court decision will be a significant precedent. In Mason Rothschild claimed his fur-covered Birkin bag NFTs, MetaBirkins, satisfied the Rogers Test by being artistically relevant and not explicitly misleading. Clearly, the humorous use and reworking of existing trademarks and trade dress is here to stay making Jack Daniel’s shot at heightened First Amendment protection highly relevant. Time will tell if Jack Daniel’s is barking up the wrong tree.

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Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 25, 2021 the Japan Patent Office (JPO) Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design  for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.

Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited of the Japan trademark law in support of their claim.

Gucci that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.

Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and . Even though the decision makers Gucci’s popularity and reputation, they of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.

Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for , “AZIDES” and “PAPAGORIRA”).

Some that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.

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Photo by Seenbutnotsurd ()

Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

Happy spooky season! From “Evil Midweek Cutie” to “Juice Demon”, the Internet has been buzzing with featuring hilarious knock-off Halloween costumes. But why do many retailers resort to using these creative names? Consumers can clearly identify the source material for these costumes (i.e., Wednesday Addams and Beetlejuice). Is changing the name from sufficient to escape liability?

Copyright Creeping into Costumes

In general, any clothing, including costumes, is not protected by copyright laws. In Canada, under section 64(2) of the , it is not an infringement of copyright to reproduce the design of a “useful article”, so long as more than 50 copies are made. The Act defines a “useful article” as having a utilitarian function, which encompasses most clothing.

There are notable exceptions. For one, section 64(3)(a) states that copyright may persist in graphic or photographic representations that are applied to useful articles. In other words, one cannot avoid copyright infringement by merely reproducing a copyrighted work on a shirt or other “useful article.” While this may not apply to most costumes, this can prevent retailers from replicating images of Disney princesses and other copyrighted characters onto their clothing. Another exception, section 64(3)(b), states that copyright infringement may still be found when reproducing an article that contains “a trademark or a representation thereof or a label.” This explains why retailers cannot use logos like the Star Wars logo on their unlicensed costumes.

Courts have interpreted the scope of section 64(2) and it’s U.S. counterpart, , to exclude jewellery and masks. In (c.o.b. SpareParts), the Federal Court of Appeal suggested that original jewellery designs may be subject to copyright protection as the mere fact that they are worn does not make it ipso facto a “useful article.” In a way, purely ornamental jewellery may be analogous to works of art. However, the case was settled before a trial of the issues. Nonetheless, the notes that those in the jewellery industry may be granted industrial design registrations, offering a different kind of intellectual property protection. This is contrary to the U.S. where original jewellery designs are automatically protected under copyright law as . Fortunately for trick-or-treaters, most jewellery designs are not to be registered with the U.S. Copyright Office. Wearing—or selling—a string of pearls to complete a Great Gatsby themed costume will not land anyone in a lawsuit.

Perhaps more relevant to Halloween costumes, in the U.S., to fall outside of the “useful article” classification, as they are not considered to serve a utilitarian function. Therefore, they may be protected by copyright. Although Canada lacks an equivalent case, Pyrrha Designs Inc suggests a flexible interpretation for “useful article”. Even though masks may receive copyright protection in the U.S., they must still meet a threshold for originality. For example, the U.S. District Court for the Eastern District of Pennsylvania that the Michael Myers mask from John Carpenter’s classic Halloween (1978) lacked the requisite originality for copyright protection; the mask was just a mold of actor William Shatner’s head!

More recently, on September 27, the U.S. District Court for the Eastern District of New 91��ɫ that the parodical and satirical use of Fun World’s copyrighted “Ghost Face” mask was permitted under the fair use doctrine. American professional basketball player Terry Rozier, nicknamed “Scary Terry”, had launched a line of merchandise that included a cartoon image of him wearing the “Ghost Face” mask, as popularized by the Scream film franchise. While the decision does not support retailers wishing to sell their own Scream-inspired mask, with the court even stating that Fun World’s copyright registration gives rise to a presumption of validity, it does demonstrate that there are ways to legally use copyrighted works in one’s own design without seeking permission. Interestingly, the court noted that Rozier produced evidence which called into question whether Fun World’s mask possessed the requisite originality, given that a third-party created and marketed a similar “Wailer” mask several months before the “Ghost Face” mask was registered. Though not resolved in this case, the validity of Fun World’s copyright hangs in the balance. 

Outside of masks and jewellery, a 2017 U.S. Supreme Court case, held that aesthetic elements of useful articles could be copyrightable only if they can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work if it were imagined separately from the useful article. The decision was applied in the costume context, in the 2019 case . Here, it was held that although a full-body banana suit is a “useful article”, the sculpted banana design itself may be copyrighted. It appears in the U.S., copyrighting Halloween costumes is not as bananas as one may think!

Scary Issues with Licensing and Trademarks

Although costumes are generally not afforded copyright protection, trademark laws still prevent retailers from selling and marketing unlicensed versions of costumes using the names which they are based on. protect brands’ corporate image via a sign or combination of signs used to distinguish their goods or services from those of others. This can include words, designs, three-dimensional shapes, textures, etc.

To avoid trademark infringement, retailers will avoid using trademarked names (like and ) and opt to sell their unlicensed costumes under parodied titles that give rise to the comical memes on our social media feeds.

Even so, rights-holders have initiated lawsuits against copycat designs with changed names that do not infringe trademarked words. For example, Fashion Nova is routinely sued for copying iconic fashion designs, even being . The central argument lies in trademark law—that the clothing has acquired the such that it is strongly associated with the brand or designer and copycats would create a high amongst consumers. Although it is unclear how strong these claims are, there remains a risk of being sued and facing litigation costs for copying a well-known design, especially given the decision in Silvertop Associates.

DIY Tricks?

Luckily for at-home costume designers, making your own costume, even of a licensed character, is unlikely to provide grounds for copyright violations. In Canada, provides that an individual does not infringe copyright by reproducing an otherwise copyright-protected work if the individual only uses the reproduction for their own private purposes. Although the U.S. lacks an analogous statutory provision, it is that using copyrighted materials for personal, non-commercial purposes is permissible.

While the last-minute, homemade Supermans and Catwomans can breathe a sigh of relief, issues may still arise if one were to sell their homemade creations on a site like Etsy. Doing so would prevent the maker from claiming a private purpose.

Overall, DIY costume-makers and even commercial costume retailers are very likely safe from liability. Still, it may be better to err on the side of caution and ensure that any costumes created do not infringe copyright (as limited as copyright protection may be) or are sold under trademarked names. Ghosts and skeletons might be scary, but there’s nothing more terrifying than an intellectual property infringement suit!

The post The Hocus Pocus of Intellectual Property in Halloween Costumes appeared first on IPOsgoode.

As part of this consultation exercise, I submitted a on behalf of the Journalism Media Studies Centre of the University of Hong Kong. This paper, which was repeatedly cited in the government’s recently-released , made three main assertions. First, none of the three identified options alone can adequately address the needs, interests and concerns of internet users in Hong Kong. Because each option serves a different purpose and has varying strengths, the government should consider adopting a combination of all three identified options.

Second, both civil and criminal exceptions, with appropriate qualifications, should be created for parodies, satires, caricatures and pastiches. Although the creation of a fair dealing exception is highly welcome, a separate criminal exception will still be needed even if that exception is to be adopted. After all, an internet user could be exempted from criminal sanctions even though the court did not find his or her dealing with the copyright work fair.

Finally, in addition to the three identified options, the government should consider adopting a fourth option not identified in the consultation paper – an exception for predominantly noncommercial user-generated content (UGC). This option is badly needed because even a broad, unlimited copyright exception for parody, satire, caricature or pastiche would not cover most of the derivative creations generated by internet users. Examples of these creations are modified photos, altered lyrics and home-made videos of music performances.

The proposal for this UGC exception is of particular interest to IPilogue readers, because it draws heavily on section . For reasons ranging from shared legislative experiences to protection against international isolation, the proposal calls for a virtually verbatim transplant of the Canadian provision. Specifically included are the provision’s three key qualifying conditions: identification of the underlying work, legality of the work or copy used, and the absence of a substantial adverse impact on the original work.

The only substantive change made was the replacement of the word “solely” with “predominantly” in the remaining qualifying condition concerning noncommercial purposes. Although this change has arguably broadened the exception to cover a wider array of UGC works, it was made primarily to clarify situations where the UGC in question does not fall squarely within the area of noncommercial UGC. A case in point is when the UGC developer has received inconsequential advertising revenue from an internet or social media platform.

Legal commentators generally disfavor the unadapted transplant of foreign copyright laws, due largely to their ineffectiveness and insensitivity to local conditions. Nevertheless, the proposed transplant would provide an important compromise needed to advance the digital copyright reform debate in Hong Kong. A UGC exception is also badly needed considering the government’s hitherto inadequate response to the needs and interests of internet users. Because users will play an increasingly important role in internet development, the proposed transplant would further strengthen Hong Kong’s knowledge-based economy while transforming the region into an internet service and information technology hub.

Notwithstanding these many benefits, the transplant effort is fraught with challenges. In anticipation of the potential criticisms from policymakers, copyright owners and their industry groups, the position paper explains in detail why the proposed UGC exception would comply with the TRIPS Agreement (in particular its provisions on the three-step test and criminal intellectual property enforcement). The paper also addresses additional questions concerning the lack of case law in regard to the Canadian UGC exception, the potential complications of rights in the underlying works and the loophole the proposed exception might create for commercial pirates.

Peter K. Yu, an affiliated scholar of IP Osgoode, holds the Kern Family Chair in Intellectual Property Law at Drake University Law School in the United States. Born and raised in Hong Kong, he serves as the general editor of The WIPO Journal published by the World Intellectual Property Organization and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association.

The post Transplanting the Canadian UGC Exception to Hong Kong: Part 1 appeared first on IPOsgoode.

Only one post remains on the and it is tellingly tagged "RIP" and "the dion effect." Dion's lawyers sent Nick Angiolillo, the New 91��ɫ blogger who runs the satirical Tumblr site which mocks silly photos of the singer, letter that him to remove all the original posts.

Angiolillo claims that he is likely in the right, but that he doesn't have the financial resources to engage counsel to respond; a wise choice on his part. There are a lot of issues at play here. Firstly, there may be a marked difference between the privacy rights and image/likeness sovereignty that can be demanded by an average citizen as opposed to a celebrity. Another issue here is practically a staple of many IP dilemmas: one nation's protection may be different than another’s, but a URL is, for the most part, international.

What about the fact that they are in many cases the work of photographers? What would be most interesting to know is whether or not Angiolillo purchased the images and rights from photobanks or simply cribbed them off a Google search. If the latter, then Celine Dion's cease and desist letter may only have been the first of several to arrive.

This brings us to an interesting point: attributing the rights of a photo to the photographer may be an outdated and archaic way of organizing online property. Indeed, now that one cultivates, fosters and monitors their online presence, one’s reputation seems to be more valuable than a single photo (or in this case, many). When photographs were primarily utilized by print sources, their regulation and distribution could be easily controlled by the Copyright Act. The world of Internet, however, leads one to ask: what are the rights of the subjects of these photos?

And finally, on the self-expression side, is there any sympathy for the fact that the blog was a genuine piece of tongue-in-cheek parody and not some kind of explosive and commercialized meme? A similar, but intensely more sophisticated site, , has t-shirts and advertising and thus the bloggers in this case are making money by making fun of celebrities. Angiolillo's grassroots site stands in remarked contrast.

Canadian courts have the 'parody defence' of material subject to the Copyright Act. This case, however, would likely be subject to US standards of 'fair use', where using material for parody purposes has been established a .

The ultimate lesson, however, is that in the early days of any legal arena with many suits pending and little precedent work – as most certainly the case with digital intellectual property and likeness law – those with the money to engage lawyers have the upper hand.

The post Celine Dion Takes On Satirical Blogger In David And Goliath Fight (Spoiler: Goliath Wins) appeared first on IPOsgoode.

Louis Vuitton may not have expected much of a counterattack when it sought to prevent Danish artist Nadia Plesner’s use of the fashion mogul’s recognizable handbags in her pictures, but the civil court at The Hague has recently .

This began in 2008 when Plesner made a piece called which depicts a malnourished African child holding a Chihuahua and a white Louis Vuitton Audet handbag. Louis Vuitton became incensed when Plesner started selling t-shirts with the image on the front (she donated the proceeds to a Sudanese charity).

A French court eventually ordered Plesner to cease and desist, but the image reappeared in her larger 2010 piece – based on Picasso’s . When the piece was placed for sale in a Danish gallery, Louis Vuitton sued again.

The Council and the Commission of the European Union have the authority to pass regulations that bind all member states. A plaintiff can file a claim based on an EU regulation in the court of any member state. Louis Vuitton’s claim is based on Article 19(1) of Council Regulation No 6/2002, known as , which provides

19(1). A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

Louis Vuitton has registered the Audet design and never gave Plesner permission to use it. Accordingly, the trial court enjoined her from using the image.

On appeal, however, Plesner invoked of the European Convention on Human Rights, which allows freedom of expression. Louis Vuitton countered with of the same treaty, which protects personal property. Because one part of a treaty cannot be used to invalidate another, the court had to weigh Plesner’s right to artistic expression against Louis Vuitton’s right to enjoy its own property.

During and after the litigation, Plesner . She explained – and the court made a similar finding of fact – that her art is intended to raise awareness of the current situation in Darfur. She feels that it is underrepresented in mainstream media, whereas human fascination with glamorous lifestyles is overrepresented. The handbag is used as a symbol of that glamour. At paragraph 4.9 the court decided that the handbag in Plesner’s work is an “eye-catcher,” and that an eye-catcher is not an expression of pure commercial nature. Since Plesner’s use of Louis Vuitton’s property was not for commercial purposes, she did not violate the company’s right to property, and her work is protected as artistic expression.

Louis Vuitton’s reason for suing was because of potential damage to its reputation. The flaw in the company’s argument is that it failed to show any real damage (see paragraph 4.8).

A recent article in the Financial Times in the United States. FT’s conclusion seems to be that American law permits social commentary and parody using commercial logos and other trademarked symbols.

In Canada, a similar case would be subject to the t sections 20 and 22. The Federal Court ruled on those sections in . The court’s decision was more favorable to the copyright holder than was The Hague court. The Michelin decision is oft-criticized, however. , and even , a branch of the federal government, have questioned the ruling’s wisdom and validity. The law in Canada then seems undecided. Nevertheless, our legal system cannot award damages where the plaintiff shows no injury, so I believe that given the same circumstances, our courts would agree with The Hague.

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