Michelle Mao is  an IPilogue Writer and a 2L student at Osgoode Hall Law School.

You may recall Usain Bolt’s subtle but impactful on August 23, 2022, adding a trademark emoji to his iconic quote, “To the World”. That tweet spoke to his trademark of his iconic “lightning” celebration pose, indicating Bolt’s possible plans to create merchandise using his iconic celebrity power and image. Indeed, when searching the United States Patent and Trademark Office (“USPTO”) database, the signature pose for many industries, including eyewear and accessories, clocks and watches, leathers, bags, clothing, footwear, games, entertainment, restaurants, etc. While Bolt’s trademark registration is for the rather than the pose, the use of poses and gestures in branding can potentially bring a new wave of “unusual” trademarks, especially as social media and technology have spread previously unthought-of but recognizable traits. One type of “unusual” mark would be celebrities’ recognizable poses or gestures.

For some time now, celebrities’ brand images have increasingly used their iconic poses or features to market their brand to promote endorsed goods and services. For example, Kim Kardashian’s body-shaped perfume gained fame several years ago for demonstrating the recognizability of Kim K’s body as her brand. In the sports world, the trend to trademark poses and gestures like Bolt’s victory pose has been demonstrated for some time, Mo Farah’s “Mobot” pose, Gareth Bale’s “elven of hearts” gesture, and Jesse Lingard’s “JLingz” gesture. Similar to Bolt’s trademark, one other notable trademarked pose as a design mark is Michael Jordan’s “” which represents Michael Jordan’s Collaboration with Nike – the Air Jordan line.

To discuss future legal considerations arising from this trend of trademarking “unusual” marks, including poses and gestures, we must first understand the purpose and limits of trademarks.

The essential purpose of trademark law is to allow one entity to distinguish its goods and services from another’s. Therefore, a when analyzing the possibility of trademark infringement is if the general public would be likely to confuse, be deceived, or mistake the source of the good or service. Trademarks do not necessarily prevent all others from utilizing the trademark in the future. A trademark protects a brand’s image by preventing others from imitating or devaluing the brand through association with a similar or identical mark. The USPTO that if you trademark a mark, it does not allow you to gain rights over the mark in all uses but only allows you to gain exclusive rights to it in its specific category of goods and services.

So, what happens when the industry you are in requires selling yourself? For example, an influencer’s job is to promote products and services through their looks, personality, aesthetics, etc. An influencer can establish their brand through iconic and recognizable traits such as poses or physical features. An influencer’s image can be used to provide an endorsement service of a product or another service (for example, a celebrity holding up a branded item to be photographed). The option to is available and is generally not an issue because likeliness is unique, but what about something more generic, like a pose, gesture, or silhouette?

The legal problem comes if the over whether an iconic or even trademarked gesture or pose is being used by a third party to refer to the originating individual or if the gesture or pose is used to signal an endorsement from the individual. For example, other athletes being pictured posing in Bolt’s victory pose may have sent a message that Bolt was endorsing them for whatever reason (luckily, in this case, it was a tweeted by Bolt in 2018 before this trademark was submitted). If displaying a pose or gesture causes consumer confusion, we enter the territory of trademark infringement.

It will be interesting to see how trademarks evolve beyond word marks and design marks alongside increased online marketing through influencer brand endorsements. While Usain Bolt’s trademark this time is only for the flat design mark of his iconic pose, there is no doubt that trademarking poses, gestures, and other iconic traits will be on the minds of celebrities moving forward.

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Michelle Mao is a 2L student at Osgoode Hall Law School and an IPilogue Writer.

In response to a , where the musical’s contents were , Lin-Manuel Miranda, creator of the Hamilton musical tweets, So, what exactly does this “work” entail?

, The Door, a church in McAllen, Texas live-streamed their production of Hamilton with modified lyrics to reference Jesus and added a scene where Alexander Hamilton repents. The production ends with a sermon helping those who were struggling with drugs, addiction, and most controversially, homosexuality. The copyright issues that exist in this situation include: unauthorized streaming, unauthorized use of Hamilton content, unauthorized alterations to Hamilton content, and an infringement of an artist’s “moral right” to their copyrighted work. 

Lin-Manuel Miranda’s lawyers can consider several measures to protect his intellectual property. First, Hamilton the Musical did not grant performers rights to use its unique content and had only granted licensing to touring companies to perform the musical in various cities around the world. Given that The Door McAllen Church is not a touring company, they had not been previously granted rights to perform and live-stream, much less alter the contents of Hamilton the Musical. 

There is, however, an added layer of complexity for Lin-Manuel Miranda’s lawyers in this case. As religious institutions, from typical copyright protections called the . Therefore, performance or display of a copyrighted work at a religious institution is allowed, such as the performance of a hymn. This exemption, however, still does not grant churches the freedom to alter copyrighted work, such as changing the lyrics of a copyrighted song. 

An interesting argument Lin-Manuel Miranda’s lawyers can make is to claim Lin-Manuel's moral rights claim to his copyrighted work. to prevent the alteration and/or distortion of their work regardless of who the copyright owner is. The purpose of this right is to protect the reputations of authors and to prevent the destruction of unique works. The moral rights argument can be very strong in this case, given the progressive message that Hamilton the Musical stands for, with its casting of people-of-colour to portray an era dominated by colonization and white settlers. It is not hard to see how altering Hamilton the Musical, which has been hailed as an iconic piece subverting oppression, to promote certain Christian values and condemn homosexuality would severely damage Lin-Manuel Miranda’s reputation. 

This problem of copyright, fair use, and moral rights, in this case, is an interesting one, where the non-profit and fair use angles of church and religion and moral rights are evaluated within overlapping legal principles. While most present-day people would view The Door McAllen Church’s condemnation of homosexuality as oppressive, the tension between an author’s moral values and rights against fair use and religious use will prompt future discussions of racism, religious freedom, and individual freedoms. 

, the dispute between Hamilton the Musical and The Door McAllen Church has been settled by The Door McAllen Church paying an undisclosed amount of damages which the Hamilton team has since to an LGBTQ-rights organization. While it is unclear which argument Lin-Manuel's legal team took to achieve this outcome, he undoubtedly had a strong copyright claim against The Door McAllen Church’s unauthorized usage of Hamilton content. 

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HEALTH CANADA ARGUES CROWN COPYRIGHT

Health Canada, the federal agency that oversees Canada’s cannabis industry, argues that Crown holds the copyright in the symbol that Dream Crew Company wishes to trademark. The mark appears to be an exact replica of the , which is required by the to appear on the label of all cannabis products that contain THC in a concentration greater than ten micrograms per gram.

In a , Eric Morrissette, the chief of media relations for Health Canada, states:

The standardized cannabis symbol is protected by Crown copyright and intended to be used for public health and safety purposes only and not for private commercial means […] It can be an infringement of Crown copyright to reproduce the symbol for commercial purposes without permission to do so from the copyright owner.

RESPONSE FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE

On November 21, 2019, the USPTO the registration of the applied-for mark. However, the refusal was not specifically for reasons relating to Health Canada’s Crown copyright, but rather, due to a likelihood of confusion with the US registered mark no. 1954405 for the word mark THC. The notes that both marks are comprised of identical lettering, namely, THC. This section 2(d) refusal applies only to the mark’s use with respect to the goods and services of Class 25. This includes boots, coats, dresses, gloves, hats, hoodies, and other articles of clothing.

The USPTO also noted refusal on the basis that the applicant did not have a bona fide intent to lawfully use the mark in commerce as of the filing date of the application. Additionally, it is argued that the mark is a universal symbol that does not function as a trademark or service mark to indicate the source of the applicant’s goods and to identify and distinguish them from others. These refusals apply to majority of the classes of goods and services that Dream Crew Company listed in its application to the USPTO. The “failure to function as a trademark” refusal relates directly to evidence from other sources, such as CANADA.CA. Given that consumers are accustomed to seeing this symbol used in the manner outlined by the evidence, when it is applied to the applicant’s goods, the that consumers would perceive it merely as “informational matter indicating that the goods are comprised of THC derived from cannabis or marijuana.”

The USPTO further refused the mark due to a lack of lawful use in commerce.[1] The (CSA) prohibits manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana. The applied-for mark relates to goods that consist of items that are prohibited by the CSA, and which are intended to include marijuana. 

WHAT’S NEXT?

If Drake and the Dream Crew Company argue to overcome the USPTO’s refusal, a response must be filed with the USPTO within six months of the issue date. Otherwise, the application will be abandoned.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

[1] Gray v Daffy Dan’s Bargaintown, 823 F2d 522, 526, 3 USPQ2d 1306, 1308 (Fed Cir 1987).

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Will.i.am opposes the registration of "I AM OTHER." Will.i.am owns a trade-mark for "I AM" in connection with clothing, live music, and entertainment. His initial cease-and-desist letter claims that due to his work and high profile, his goods and services have acquired goodwill. His concern is that due to professional proximity as famous musicians and a history of collaboration, consumers will think that the "I AM" portion of the mark indicates that he approves of Pharrell’s venture or is involved with .

Conversely, Pharrell argues that Will.i.am’s rights over the term "I AM" are weak, citing numerous rejected applications by Will.i.am as well as the large number of marks registered prior to Will.i.am that utilize the phrase. In class 3 cosmetic and perfume goods alone there are over 30 co-existing registered marks that utilize the phrase "I AM." Pharrell further claims that "OTHER" is the dominant feature of his mark - indicating the philosophy of his venture - while Will.i.am’s dominant feature is WILL - indicating the artist’s name.

I AM is also a common phrase in the music industry and in pop culture. Will.i.am may be a reference to Dr. Seuss’ Green Eggs and Ham’s "Sam I Am," to Descartes' “I think therefore I am,” and/or Popeye’s catchphrase - “I yam what I yam.” Pharrell claims that there are at least 146 instances of musical groups using the phrase I Am. In 2008, it was the name of Beyoncé’s ���������ܳ�,��I Am…Sasha Fierce, and I Am Beyoncé is the name of her .

Pharrell suggests that Will.i.am’s argument in this case runs counter to his position in a request for reconsideration of a denied class 3 perfume trade-mark application. In the request, Will.i.am pointed out that his perfume and the perfume of Danica Siegel led to distinctive commercial impressions in the marketplace.  He further argued that simply having marks with an identical portion did not necessarily mean that the marks would cause confusion. His position was that there would not be consumer confusion so long as they did not market the products in a way to create the assumption that they originated from the same source. He claimed that high end perfume consumers are highly sophisticated consumers who can determine a good’s source.

According to Will.i.am, Pharrell’s use of his reconsideration application may not be an apt comparison to the matter at hand. In this case, both parties are high profile musicians who have worked together in the past. None of the other registrants in the reconsideration example had a high profile nor had they collaborated with Will.i.am. Even if consumers are discerning, the close association with the two artists' work and their products may lead to confusion in this case.

In my opinion, if the brands are closely associated with their respective celebrities, then it would make sense that the products are dependent on marketing to fans intent on seeking out those products that have such a deliberate connection. Fans who would be enticed to purchase celebrity-endorsed goods will presumably be knowledgeable enough about that particular celebrity's work and endorsements to distinguish their wares or goods from that of others. In fact, it is possible that fans could be considered sophisticated and informed consumers in the market of celebrity brand lines. The question is whether the "discerning fan" is of any interest to the court in deciding such a case.

The sheer amount of publicity this trade-mark dispute has garnered could mean that even average consumers who do not follow Pharrell and/or Will.i.am will be aware of the dispute and be able to distinguish between their marks. For example, the  for confusion is a consumer of average observation in somewhat of a hurry. The high profile of those involved with the dispute means that it is now widely publicized and potentially (depending on how  the feud remains) common knowledge to the average consumer that i am OTHER is Pharrell’s online venture, one that is not associated with Will.i.am’s family of trade-marks. Whether or not this will be considered by the courts remains to be seen.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School. 

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