Andrew Masson is an IPilogue Writer and 2L JD candidate at Osgoode Hall Law School.

Was a $46.3 billion piracy problem accelerated by the ad campaigns that attempted to stop it? Gilles Grolleau and Luc Meunier believe this could be the in their article published on July 7, 2022. ��Today, anti-piracy commercials might be a , ����but Grolleau & Meunier attempted to critically analyze why the ad (and similar ones) may not work. The article does not provide empirical evidence but rather offers insights and reasons as to why commercials may not have effectively deterrent piracy.

The authors based their arguments on with the current anti-piracy ads:

1. The ads over-emphasize piracy’s prevalence.

When an ad stresses how widespread a problem is, it risks people seeing piracy as a social norm. This in turn limits societal pressure to change behaviour. This same trend has been shown in similar commercials about drug/alcohol abuse, suicide, and pollution.

2. The ads should not emphasize the high number of victims.

If everyone is a victim, then no one is a victim. Well-identified individual victims are more likely to gain sympathy than a general group.

3. The ads should not use a shotgun approach to arguments.

is the use of a few strong arguments would more effectively curb piracy than a mix of strong and weak arguments. Although people may think that adding more arguments will improve the total package, the opposite is true if the arguments are not strong. If one strong anchor argument is diluted with moderate add-ons, people perceive the total package as less than the anchor argument alone.

The authors provide some strong points and applied established theories from other fields to piracy, they overlook some factors that may important to the argument. One fundamental difference between piracy and traditional forms of stealing (carjacking, purse stealing, etc.) is that the owner is not deprived of their property in the traditional sense. They incur a loss of profits from the reproduction of that product. This factor may also explain why piracy is not easily deterred through traditional methods of arguing and advertising. Overall, this article highlights the problems that digital media and ownership will keep producing in the legal system and the difficulties that arise when applying traditional legal concepts in modern society.

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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.

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The video advertising the event, which is sponsored by Monster, featured the group’s name as well as samples from the songs "Sabotage," "So Whatcha Want" and "Looking Down the Barrel of a Gun". The suit against Monster will ask the court not only for an injunction but also damages in the amount of $150,000 for each infringment.�� Since Monster apparently did not get permission to use the band’s name or music, the legal basis for the suit appears to be straightforward.��

However, it was also discovered that the late Adam Yauch handwrote an addition to his stating the following: "In no event may my image or name or any music or any artistic property created by me be used for advertising purposes".�� Apart from whether or not this addition to Mr. Yauch’s will is actually a , it creates a variety of complexities when it comes to copyright law.

The most obvious complexity is that Mr. Yauch can only restrict the use of copyrighted works for which he is the copyright owner.�� If we take the current lawsuit as an example, Monster is accused of violating copyright in the music of the Beastie Boys.�� Unfortunately, Yauch is only a along with the other members of the Beastie Boys when it comes to the music used by Monster.�� The issue then becomes how to separate Yauch’s section of the work from that of the other members of the group.�� Fortunately, in the current case, this issue is about Monster using the band’s work without getting a license from any of the copyright holders.�� Therefore, the living members of the Beastie Boys have a good reason to support the claim that the Yauch estate has for infringement of copyright.

However, what if the living members of the band decide to license their band’s music for use in advertising?�� Normally the Yauch estate would benefit financially from the licensing agreement and there would be no reason for them to object.�� As it stands now, with the addition to the will, the executor of the estate might be legally bound to try and prevent any advertising deal from being reached.�� It is possible that the other band members will try to honour Mr. Yauch’s request in his will out of respect for him and avoid ever licensing use of their music in any advertising.�� However, if they did license their music for advertising, and the matter actually went to trial, the executor of the Yauch estate might find that last written instruction to be�� in the American legal system.��

In Canada however, trying to enforce Mr. Yauch’s wishes might not be as hard as it is in America.�� In Canada, authors have a separate moral right which comes from section 28.2(1) (b) of the , and is commonly known as the “Right of Association”.�� Essentially, an author, regardless of signing away economic rights in a work still retains the right to object to the work being “used in association with a product, service, cause or institution” and can prevent the work from being associated with any product.�� Therefore in Canada the Yauch estate might have an easier time arguing that no Beastie Boys song should ever be used in any advertising, because that was clearly the wish of Adam Yauch before he died.

Fortunately for the rest of the Beastie Boys, the current lawsuit is based upon a use to which they all object, and therefore the legal ramifications of Mr. Yauch’s will does not need to come into issue.�� In the future however, the living Beastie Boy members might find Yauch’s will to be a minor hindrance when trying to license their music to advertisers.

Adam Stevenson is a J.D. candidate at Western University

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Online keyword advertising, using internet search engines such as Google and Yahoo!, continues to be a highly contentious area of the law.�� Litigation involving trademark infringement by competing companies in keyword advertising campaigns continues in Canada and around the world.�� In Canada, it appears that competing companies are allowed to utilize each others’ respective trademarks as keywords for online advertising so long as the trademark does not appear within the sponsored link or advertisement ().�� On the surface, advertisers have great latitude to use competitors’ trademarks for keyword ads.�� Yet many jurisdictions around the world attempt to prevent ads that mislead customers or damage competitors’ trademarks.��

The European Court of Justice (ECJ) has addressed the issue of misleading keyword advertising on internet search engines in Portakabin Ltd and Portakabin BV v Primakabin BV.��

The plaintiff, ., is a manufacturer and supplier of mobile buildings and is the owner of the PORTAKABIN trademark for goods in both metal and non-metal buildings, parts and building materials.�� The defendant is a competing company that also manufactures and markets its own mobile building units, such as work shelters or temporary offices.�� Primakabin is also engaged in selling and leasing used units, including those manufactured by Portakabin.

The basis of the claim against Primakabin is that it paid to have its web address and company description posted as a sponsored link when users of Google typed in 'Portakabin' or misspellings of the word.�� The heading of Primakabin’s ad, which appeared once one of those words was entered into the search engine, was ‘new and used units’. Later Primakabin changed this to ‘used portakabins’.

Portakabin commenced its action against Primakabin seeking an injunction to prevent the use of its trademark as a keyword for Primakabin’s advertisements on Google’s internet search engine. ��Portakabin also sought relief from Primakabin’s use of its trademark when advertising second-hand Portakabin units. ����Portakabin’s claim alleged that Primakabin greatly benefited from online keyword advertising using the PORTAKABIN trademark to market used Portakabin models.�� Portakabin also stated that the use of its trademark as a keyword and within Primakabin’s ads mislead customers, ultimately damaging the value of the PORTAKABIN mark.

In response to the reference from the national court, the ECJ provided guidance to help determine when trademark owners may prevent the use of the mark by an advertiser.�� The ECJ stated that “a trade mark proprietor is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that mark…where that advertising does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it”

Building upon this test the ECJ clarified when a trademark owner may restrict the use of a mark as keywords for internet search engines, that was used without the consent of the owner and is identical with, or similar to the owner’s trademark.

The European indicates that the owner of a trademark is entitled to prevent use, without the owner’s consent, of that mark should the use adversely affect the function of that trademark.�� The Court, referring to case law, explained that if the ad suggests there is an economic link between the advertiser and trademark owner, or the ad is vague to the extent that the origin of the goods or services is thought to be linked to the trademark owner, the conclusion must be that there is an adverse effect on that function of the trade mark.

However, in contrast the ECJ indicated that the trademark owner “cannot oppose that use of the sign, identical with its mark, if that use is not liable to cause detriment to any of the functions of that mark”.�� This assessment, by the ECJ, indicates that the core of the national courts analysis must be to determine if the average internet user would be misled to think that the source of Primakabin’s advertisement was Portakabin.

If the national court finds that the ad does not allow the average internet user, or enables them only with difficulty, to determine whether the goods or services advertised originate from the trade mark owner or from a third party, it is unlikely that the advertiser can claim not to be aware of the ambiguity caused by the ad.�� The ECJ advised, in this circumstance, that because the advertiser has full knowledge of its economic sector and chose keywords corresponding to another company’s trade mark, the advertiser cannot, in principle, claim to have acted in accordance with honest practices in industrial or commercial matters.

Despite the potential that Primakabin’s advertising campaign has to mislead internet users, the ECJ observed that the sale of second-hand goods under a trade mark is a well-established form of business, with which the average consumer will be familiar.�� As a result, the ad will likely not create the impression that the reseller and the trademark owner are economically linked or that the ad is seriously detrimental to the reputation of that trademark.�� The ECJ concluded its explanation stating that without using the trademark, the reseller who markets second-hand goods under another person’s trade mark, will have difficulty communicating such information to his potential customers without using that mark.

The ECJ then went on to analyze how Primakabin’s conduct, as a reseller of used Portakabin units, influences the plaintiff’s claim.�� Portakabin claimed that Primakabin had removed any reference to the trademark PORTAKABIN from the used mobile buildings which it was selling and replaced it with the wording ‘Primakabin’.�� This practice of rebranding was later confirmed by Primakabin.��

When a product is rebranded by a reseller, without the consent of the trademark owner and resulting in the trademark of the manufacturer being entirely concealed, the ECJ advised the national court that the trademark owner is entitled to prevent the reseller from using that mark in its advertisements.�� The ECJ continued, stating that the use of the trademark by the reseller, in this circumstance, would damage the essential function of the trademark, which is to indicate the original origin of the goods.

This reference to the ECJ clarifies the ability of keyword advertisers to utilize competitor’s trademarks.�� The national court must now consider if Primakabin’s keyword advertisements mislead internet users as to the origin of the advertised goods.�� The national court must also weight Primakabin’s business practices of occasionally rebranding Portakabin’s units when determining if the value of the PORTAKABIN trademark has been damaged.��

Advertising on internet search engines should allow broad use of keywords, including trademarks, to provide customers the ability to view as wide a spectrum of products as possible.�� It is appropriate that the ECJ holds that advertisers may utilize trademarks as keywords for search engine ads, while granting trademark owners the ability to prevent the use of their mark in ads that mislead internet users, or damage the value of the trademark. This ECJ opinion appropriately outlines the boundaries that limit keyword advertisers from utilizing competitor’s trademark while balancing the rights of trademark owners and advertisers.

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Online advertising is a growing and lucrative business.�� In 2009, $22.7 billion USD was spent on online advertising within the U.S. which is to grow to $25.1 billion USD by 2010.�� A significant amount of this revenue is generated by Google, Yahoo and other search engines which allow targeted advertising linked to keywords entered when searching the internet.�� Advertising can be linked to any word, even those registered as trademarks for a competing company.���� This advertising technique allows the bidders to have their website posted as a sponsored link above the organic search results, potentially diverting customers away from the website initially sought after.��

is �䲹�Բ��岹’s first jurisprudence regarding keyword advertising on search engines.�� In this decision the (the Agency) sought a permanent injunction restraining (VCC Inc.) from attaching their advertising (i.e. being a sponsored link) to keywords that include the business names of other educational institutions.��

VCC Inc. is subject to the BC Private Career Training Institutions Act, and bylaw 29, passed under this Act, prohibits institutions such as VCC Inc. from engaging in advertising that is false, deceptive or misleading.�� The Agency alleged that VCC Inc.’s use of competitors’ business names as keywords in their Google or Yahoo advertisements was in violation of Bylaw 29, and was designed to mislead students seeking information about one institution, away from that institution, and towards one of its own.��

To further its argument, the Agency utilized two accounts of complainants being mislead by VCC’s advertising.�� The first complainant registered at VCC Inc. in error, thinking it was the , while the second sought information about the but selected the sponsored link of instead.�� Upon discovering her error the first complainant was given a full refund.��

In arriving at his decision Justice Gaul consulted Canadian Trade-mark jurisprudence and U.S. case law regarding advertising using keyword searches.�� Justice Gaul concluded that VCC Inc. had not misled the complainants and that VCC’s use of competitors’ business names, as keywords, within its internet advertising campaign did not contravene Bylaw 29.�� Justice Gaul found that the complainants “were not misdirected or led astray by anything other than [their] own oversight” (PCTIA v. VCC, para. 75) and��accepted as fact that VCC had not "ever used the names of competitors or trademarked terms in the title line, description line or URL of its online advertisements." (PCTIA v. VCC, para. 26).��

This decision is entirely appropriate.�� Consumers on the internet should always adopt a ‘buyer beware’ attitude, especially when browsing educational institution or other products on the internet.�� As long as a competitor’s business name is not used directly in the advertisement, this form of advertising is no different than placing an ad, next to a competitor’s, in the yellow pages, or newspaper.�� Providing a variety of options for consumers to consider, informs search engine users, allowing them to make informed decisions regarding which products to buy or what school to attend.�� This free market approach to keyword advertising on search engines benefits both advertisers and consumers and is a solid precedent for the rest of Canada to follow.

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Last week, U.S. President Barack Obama found himself in a strange place: Plastered across a 30-foot billboard in Times Square, hawking rain coats. The depicted a bold-looking Obama walking along the Great Wall of China with his hands dug into the pockets of a black jacket with the tag line “Weatherproof: A Leader In Style”. Although the photo was properly licensed from the Associated Press, Weatherproof did not clear the ad with the White House. The billboard was eventually taken down a few days later (at the White House’s request), but the whole situation raises some interesting issues around personality rights, particularly for extremely public figures like the President.

“This ad is clearly misleading because the company suggests the approval or endorsement of the president or the White House that it does not have,” . Yet this is not the first brand that has tried to associate itself with Obama. Vancouver-based yoga clothing company Lululemon recently ran an “” magazine ad featuring a cartoon Obama sitting in the lotus position. Similarly, the Vatican has gone to great lengths to try to in advertisements and merchandise. And, of course, there was the infamous .

Celebrities in Ontario are generally protected by the appropriation of personality tort. Cases like Krouse v. Chrysler Canada Ltd. et al. (1973), 1. O.R. (2d) 225, 40 D.L.R. (3d) 15, 13 C.P.R. (2d) 28 and Athans v. Canadian Adventure Camps Ltd. et al (1977), 17 O.R. (2d) 425, 80 D.L.R. (3d) 583 (Ontario High Court) established that celebrities have a proprietary right in the marketing for gain of their personality, image and name. Comparable rights of publicity exist in most other common law jurisdictions as well.

However, the line gets blurry when the advertisements don’t actually suggest��that the celebrity is endorsing the product. In Krouse, for example, a car company used a photo of the plaintiff (a football player) in its promotional materials, but only in the form of a generic football action shot. The plaintiff’s face was not shown and he was identifiable only by his jersey number. In Athans the defendants used a drawing of the plaintiff (a famous water skier) in their summer camp pamphlets but made no indication regarding the plaintiff’s actual endorsement or involvement in the camp. In both of cases it was unclear whether there was an express intent to misappropriate the celebrity’s likeness for profit.

Things get even hazier with uber-public figures like Obama and the Pope, who to some extent live and work constantly in the public eye. It could be argued that these figures are so ubiquitous that they really have no expectation of being able to control and commercialize their images. In the Weatherproof ad there was no indication that the President was actually endorsing the jackets, nor does the ad even use his name. Furthermore, there is probably very little expectation on the public’s part that the President or the Pope would ever endorse a clothing brand. Most Americans would probably not assume that their president was acting as a Weatherproof spokesman despite his appearance in their ad. These factors make it difficult to see where exactly the misrepresentation or the damages were in this case.

Rights of personality remain a tricky issue, even more-so for the super-famous and political figures. In this case it appears the White House managed to use their political muscle to get the ads taken down, but Weatherproof certainly got more than their share of publicity out of the whole stunt. Meanwhile, here in Canada the only ads our Prime Minister has been in lately are . Stephen Harper: A follower in style?

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If everyone is the best, as per their advertising, would that mean that all products are merely average?

This is a conundrum that serves as a key point of consumer frustration: How do we differentiate amongst products who all seem to be claiming the same qualities?

Last Tuesday, Telus announced it had been granted a against Rogers Communications, over the claim that Rogers offers “�䲹�Բ��岹’s most reliable network”. You may remember this from the countless ads that bombarded us daily��to reinforce their brand messaging.

There may have been merit in the claim in the past, where Telus operated at a significant technological disadvantage to Rogers (Telus was married to the arguably dying CDMA technology). Now that Telus has launched a new high speed network, these claims may no longer be true. In his ruling, Justice Grauer acknowledges these differences and notes that continuing on with the advertisements would be misleading.

Interestingly enough, Rogers is now seeking a similar on Bell, who uses similar terms in its advertising.

The Proof is in the Pudding

What does this mean for customers? It would appear that the courts are suggesting that corporations need to be able to provide compelling proof that back up their claims - it is not simply enough to trumpet your wares without substantive grounds. In theory this would provide a great benefit for the customer, a vulnerable party who often does not have enough reliable information to make an informed decision. How often have we heard companies describe their service as the ‘best' and wondered whether it was only an advertising gimmick?

It has been suggested that the increase in prevalence of these lawsuits are a reflection of the realities of an economy in , but I think there are long term implications that should also be considered. Essentially, these rulings open up a battlefield in terms with very high stakes - market perception is fundamentally tied to market share and product margins.

This may lead to drastic changes in how advertisers develop brand slogans and corporate identities. For example, how does one prove a certain shampoo ‘repairs hair’ better than their competition? How about for broader claims that aren’t directly associated with any individual quality in the product itself - . There is also an issue in how research findings are interpreted and applied - recently won 11.4M USD in damages from GE where it was found that GE misrepresented a clinical study comparing their X-ray products.

While I am not an expert in this area of law, I believe a measure of caution needs to be taken in how far we take this measure. For each industry or product, there are certain critical elements that can and should be quantified in proving which product is superior. In the case of the mobile carriers, perhaps this can be measured in a study of throughput / quality of service metrics. From here, we can infer a basic and consistent set of criteria, measured by an independent third party. However, for more subjective elements, I would think that they do not require as stringent of a test. Advertisers do need a certain to do their jobs effectively, and to me, this would seem like a reasonable restriction that balances their creative freedom with the rights of consumers.

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