Photo by Tommao WangĚý

Ariel Goldberg is a third-year undergraduate student at 91ŃÇÉ«.

For most, Tiffany’s robin’s-egg blue box immediately represents luxury jewelry. However, British artist Stuart Semple considers Tiffany Blue as being held captive through trademark law. To , Semple created 150 ml tubes of matte acrylic paint named which replicates Tiffany & Co’s signature hue.

Semple has been , with previous paints replicating trademarked colours including , , and . His is to increase the possibilities within art by making accessible what he claims are unattainable colours. Semple has pushed his commentary further by preventing individuals who hold registered colour trademarks from purchasing specific paints on his e-commerce website. Now, Semple’s most recent paint, Tiff, targets Tiffany & Co by sharing the brand’s iconic blue with all artists.

was created in 1873 by Charles Tiffany and John Young and has been registered as a colour trademark in the U.S since 1998. colours were outside the scope of trademark protection. The Lanham Act—the federal trademark statute in the U.S—does not include colour in the statutory definition of trademarks. In the 1995 decision, the U.S Supreme Court held that a colour could be registered as a trademark but required that the colour’s use be non-functional and that it has a In other words, consumers must associate the colour with a single source.

While Tiff paint has sparked conversation about monopolizing colours, Semple’s strong language on his e-commerce website and social media posts overstates the Tiffany & Co’s trademark rights. Semple wrote in an Instagram caption that Tiffany Blue is “trademarked in every category” and that However, colour trademarks are not synonymous with ownership of the colour. Trademarks are generally registered in connection to specific goods and services, which are divided by industry under the global system. Tiffany & Co has a multi-class registration for Tiffany Blue, but these are all narrowly defined. Tiffany Blue is registered for its use on “jewelry pouches with drawstrings” in Class 14. The trademark covers uses of the colour that would reasonably confuse the public to believe Tiffany & Co was the source.

Essentially, trademarks operate as a source indicator. Colour trademarks protect brands if the use of the colour in connection to specific services or goods would confuse customers. Christian Louboutin holds trademark rights for the use of Pantone 18-1663TP on shoe soles and Hermès maintains trademark rights for the use of a specific orange on packaging. Again, trademark protection is granted over the use of the colour in relation to specifically defined goods and services. It is not protection for the use of the colour on anything and everything.

In addition, colour trademarks are not effortlessly granted; it is difficult to gain monopoly over a colour. It can take time to develop the required secondary meaning. In the case of , The New 91ŃÇÉ« Sun reported the iconic nature of Tiffany & Co’s blue boxes in 1906, which is a significant time frame to be using the colour in relation to packaging and jewelry. Essentially, the colour’s use was so well known it was functioning as a source indicator before protection was granted. Even if secondary meaning is established, the colour which means that the colour cannot be essential to or a characteristic of the good or service. The functionality doctrine protects competitors against a disadvantage. Ultimately, there are safeguards to granting a colour trademark which prevents widespread and overly broad monopoly of colours. Further, rights are limited to the consistent use of the colour.

Tiffany has yet to respond to Semple’s paint. Regardless, Semple plans to continue “liberating” Tiffany Blue. He , “I see the art materials as more of a cultural critique, a piece of critical art [rather] than a business.” While Semple’s cultural critique exaggerates the protection granted through colour trademarks, Semple has started a conversation. He has also shown the importance in recognizing the limitations and safeguards in colour trademarks.

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Beep! Beep! Beep! The sound of your alarm marks the start to your day. As you resist the urge to snooze, it is likely you are about to effortlessly unlock your phone with the help of facial recognition technology. Whether you prefer to meditate or perhaps kickstart the morning with a workout, your favourite playlist is at your fingertips.

In a digitally dominant era, consumers rarely hesitate to use their faces as keys to unlock the online world. The use of interactive face filters on social media platforms complements this integration of face detecting technology into our daily lives. When capturing a photo, users on apps such as Snapchat or Instagram may select from a variety of face filters– Adding a pair of bunny ears or retro sunglasses to your picture sounds harmless, right? What if that filter features a makeup artist’s work? With tech becoming ever more sophisticated, users can now opt to express themselves with filters that seamlessly blend vibrant eyeshadow or sparkly lipstick designs (among many others!) to their face.

Flashing back to 2016, only a year after Snapchat first launched its filters (more commonly referred to then as “”), the app introduced a design closely resembling, if not an exact replica of the look by artist . At the time, Mykie While you may debate whether the filter deviated from Mykie’s design so as to count as a new work (lacking a degree of substantial reproduction) – we must first question, are makeup designs captured by copyright protection? Spoiler alert, it depends.

Let’s dive into the copyright landscape to further explore this subject.

According to of the Copyright Act, copyrights subsist in artistic works such as photographs or paintings. But, as stated inĚý, in order to receive copyright protection, a work must be “original,” i.e., the result of the exercise of skill and judgment, “in a manner that is not so trivial that it could be characterized as a purely mechanical exercise.”[1] And only expression, not an idea, is protectable. ĚýOsgoode’s own Professor Carys Craig notes, Your everyday cat-eye look might not attract copyright protection, but how about when the design is closer to that of stage makeup? This area of law has yet to be extensively litigated in Canada, however our international counterparts have grappled with the intersection of facial makeup and copyrights with varying degrees of fixation required.

It is crucial to flag that copyrights extend to the expression of an idea, having a “more or less permanent form.”[2] In Merchandising Corporation of America Inc v Harpbond Ltd, a 1983 UK case, makeup was found to be outside the scope of copyright protection, as one commentator put it, the makeup on musician Adam Ant’s face, “.”

The Compendium of U.S. Copyright Office Practices notes, “”[3] Unlike tattoos (which have their own set of copyright obstacles), makeup when met with water, vanishes. However, the ephemeral nature of a work does not bar copyright protection. For example, a sand sculpture that is then washed away by tides or a wedding cake later eaten by guests is within the ambit of copyrightable subject matter. [4]

The face – as an alternative medium – must not serve as an impediment to an artist’s access to protection. Social media platforms ought to think twice between reproducing a makeup artist’s work without consent. Whether your canvas of choice is paper or skin, copyright protection prioritizes the originality of the art, as the work moves out of the common stock of ideas and into the pool of intricate facial illustrations. Consider the skill required to perfect the detail and imagery in Natascha Pedersen’s As a painter using acrylics, a makeup artist is similarly armed with a brush full of beautiful colourful powders.

[1] at para 16.

[2] Canadian Admiral Corp v Rediffusion Inc., [1954] 20 C.P.R. 75, para 28.

[3] at p 3.

[4] ĚýIslestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch) at para 48.

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InĚý, The High Court Chancery Division of England, reasons given by the Honourable Judge Birss QC, held thatĚýĚý(the colour purple) was sufficiently regarded by the public as associated with Cadbury chocolate to register the colour as aĚý.Ěý The protection, after some discussion of the Court, would be limited to Pantone 2685C associated with the wares:Ěý“Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate” ().Ěý In the decision, Judge Birss QC acknowledged that colours are registrable trade-marks in the European system under the Art. 2 definition ().Ěý What makes this decision surprising is that a former decision was reached in Australia in 2006 which came to the opposite conclusion.

Ěý(No 4) [2006] was a passing off action decided in the Australian Federal Court. ĚýThe Honourable Justice Heerey, in giving reasons for judgement, concluded that Cadbury did not have any rights in the colour purple because they lacked the exclusive reputation of using purple in connection with chocolate.

Why the apparent discrepancy between these two decisions?Ěý One likely explanation is that the courts in these two cases were provided with different evidence.Ěý For example in theĚý, it was pointed out that NestlĂ©, chief competitor to Cadbury, uses a dark purple colour, similar to that of Cadbury’s, in their chocolate product packaging. In theĚý, it was pointed out that Cadbury had been using the colour purple on its product packaging since 1914, and the opponent NestlĂ© accepted the findingĚýthat Cadbury's purple mark was distinctive.Ěý Perhaps the Pantone 2685C was a sufficiently narrow colour for Cadbury to prove that they had distinguished themselves from NestlĂ©.Ěý But whatever the reason, the court in the UK decision was clear that a colour is registrable under the EU system, provided it had a distinct reputation in a class of goods.

Has protection of marks become too broad, with the inclusion of simple colours, to ensure fair competition?Ěý The UK Cadbury decision is not the first time a distinctive colour has been registered as a mark.Ěý For example, inĚý., the US Supreme Court held that a colour on its own does fit within the defined limits of marks which can be registered under the US Lanham Act.Ěý The difficulty in registering a colour as a mark appears to be convincing a court that your mark has a distinct reputation in connection with the goods sold.

Take the Cadbury case as an example, the court recognized that Cadbury did not have the kind of reputation necessary to protect the colour purple in connections with all their products.Ěý That is why the court limited the class of goods that would receive this protection to “Milk chocolate in bar and tablet form; milk chocolate for eating; drinking chocolate; preparations for making drinking chocolate”.Ěý The court also recognized that Cadbury was asking for the protection regarding a very specific shade of purple (), which opponent NestlĂ© conceded was distinctive of Cadbury.Ěý In addition to the limited shade, Cadbury further had to identify that the colour was “applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods” ().Ěý Therefore their protection is limited to a particular shade, applied predominantly on packaging of specific chocolate products.

Since the scope of that protection is extremely narrow, I think that it is difficult to assert that this kind of protection is unfair. Applicants trying to register colours as marks will have to prove that the colour is distinctiveĚýof the goods being applied for (see IP Osgoode's coverage ofĚý).Ěý The evidentiary burden on potential registrants appears to be high enough to limit colour trade-marks to the few applicants that will be capable of proving a colour’sĚýdistinctiveness to their wares. ĚýIf they can do that, on what grounds do we reject registration? ĚýI think that so long as the colours protected remain specific and apply only to a very limited scope of goods, the system of trade-mark protections is not abused by registering colours as marks.

Adam Stevenson is a JD Candidate of Western University, faculty of law.

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Budweiser has beer cans in the colours of local college football teams in some markets in the US. For example, in parts of Michigan they are selling a maize () and blue "fan can" that matches the colours of Michigan State University. Though many universities are fine with this---or at least willing to put up with it---the campaign has caught the ire of others, including Michigan State which has threatened legal action.

It probably won't come to that because Budweiser's policy is to pull the cans immediately if the university complains, but it does allow me to consider a few questions: (1) could the universities stop Budweiser from selling the cans, and (2) should they be able to? I apologize for asking questions I can't definitively answer, but I encourage you add your own thoughts in the comments.

A university would have to prove two things: that they have a trademark and that trademark is infringed. A colour scheme is capable of functioning as a trademark. So if the university can establish that the colour scheme has acquired a secondary meaning as a source of goods, then they should be able to claim ownership rights over that scheme. The very premise of the campaign would make this seem likely: each colour scheme is available only in the vicinity of the school it is targeted at because that is where people will recognize it and buy it to support the local team. Then it is up to the universities to show infringement---that consumers are likely to be confused as to the source of the beer or the relationship between the schools and Budweiser. This question is undeniably fact-based, but that when a mark "was adopted with the intent of deriving benefit from the reputation of [the mark holder] that fact alone may be sufficient to justify the inference that there is confusing similarity." All this is to say, the case will turn on the facts but a university would have a serious chance.

If you have read reports on this in the media or comments in blogs, you may find a lot of people siding with Budweiser. After all, they're just encouraging school spirit, right? They're not actually competing with the school. Intuitively, it would feel different if they were selling knockoff souvenirs or merchandise that cut into the market for items sold at the school gift shop. But there are, I believe, compelling reasons in favour of protecting the schools. When I read about this, I was immediately reminded of the Olympic marks because people buy products in school colours or with the Olympic mark to support a public institution. American universities, as with the Olympics, make a lot of money by licensing their marks to companies that want to profit from this. Budweiser, if they are infringing, would be deriving a benefit by misleading consumers and depriving universities of licensing fees. That wouldn't be right. It's all in how you phrase it.

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