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

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Powerful. Bold. Influential. These are just some of the words that ’s emphasizes for a first-generation Black law student like myself. You can only imagine how much an organization could profit from using those photos for a fundraising campaign for Indigenous, Black and people of colour (IBPOC).

Early July 2021, Roderique received a message from a friend who had visited The Hudson’s Bay Company (The Bay) where she came upon Roderique’s photo for the company’s “” initiative. The fundraising initiative sought donations “.” The online website page continues to state that it makes “.” This is ironic because The Bay was using Roderique’s image and face without her consent.

Roderique’s Response

Roderique took to Twitter when she received a text message from her friend saying, “.” Since Roderique was unaware of the advertisement and was not doing work for The Bay, she tweeted the following: “”

Screenshot from .

As seen in the image above, The Bay replied: “.” The Bay made a statement to CBC News saying the picture was taken from the photographer’s () as inspiration, but was never changed. The Bay has since removed the image from all advertising.

Roderique said that “.” The Bay has yet to release further statements about the matter or comment on whether the company will take further action. Roderique said she would like to see a financial donation as this “mistake” happens too often to IBPOC creation.

The Legal Side

An entity’s unauthorized use of a photographer’s image engages many legal issues: , , and , to name a few. Although few laws concern the use of an image without consent, the , the , the , and the address these legal issues. In this post, I will focus on the Copyright Act.

Under s. 13(1) of the Copyright Act, “.” In other words, every photographer owns the photos that they take. According to section 6 of the Act, ownership will last, until otherwise expressed, for “.” Accordingly, the photo rightly belongs to Luis Mora, the original photographer. Roderique noted that .

However, the Act includes an exception. states that if the photographer was contracted for work, the photos taken belong to their employer. Additionally, under , the photographer can contract out of this complete assignment of rights, and instead grant certain rights in the photo instead of full ownership. Given the comments made, Roderique and The Globe and Mail have some rights over the original image. Nevertheless, Roderqiue maintains that .

The Importance

Although mistakes do happen, I noticed an abundance of comments online from people who could not see the importance of this issue while researching this matter. Society has a long history of profiting off the work of Black people without giving appropriate recognition or credit. For example, some social media platforms have ned Black content creators for criticizing the lack of credit they receive, all while White creators profit by copying Black creators’ content.

The importance of the issue is not a matter of money or fame, but of dignity and recognition for IBPOC’s hard work. Society is long overdue to give IBPOC the credit they deserve. Large corporations and entities that are not a part of the IBPOC community especially need to stop profiting from IBPOCs’ hard work without crediting its creators.

The post Ironic Advocacy at Its Best: The Bay Apologizes to Hadiya Roderique for Copyright Infringement Mistake appeared first on IPOsgoode.

On June 15, 2020, a was filed against the National Collegiate Athletic Association (NCAA) on the grounds of breaching federal antitrust laws. Regulations such as the NCAA’s amateurism rules prohibit college athletes from using and being compensated for the use of their name, image, and athletic reputation. In recent years, these regulations have been increasingly contested by college athletes, alleging that the NCAA, a billion-dollar corporation, is protecting its monopoly over college sporting in the United States.

An athlete’s reputation, name, and image are the foundation of the intersection between intellectual property and entertainment. The World Intellectual Property Organize notes that “.” Once a student-athlete has developed into a professional athlete, how they can protect their image grows exponentially.

In this class-action lawsuit, the NCAA attempted to justify its regulations by claiming that the status of “” was not categorically valid in the commercial setting. However, considering the modern context of college sports, especially college basketball, there is a strong argument to be made in favour of recognizing players as celebrities.

Recently, there has been a growing media frenzy surrounding the NCAA’s March Madness event. As the NCAA’s popularity skyrockets, issues regarding right to image and compensation surfaced as athletes found themselves increasingly restricted by the amateurism regulations.

O’Bannon’s Legacy for College Athletes

In 2008, Edward O’Bannon, a University of California, Los Angeles (UCLA) basketball player, was depicted in a video game by Electronic Arts (EA). In said game, there was an avatar O’Bannon never consented to having his image used in the video game, and EA, a multi-million dollar gaming software corporation, never offered to compensate him for their use of him as a character.

When O’Bannon’s case was brought before the district court in 2015, Judge Claudia Wilken that the NCAA’s amateurism rules violated federal antitrust law, and ordered colleges to pay male basketball and football athletes up to $5,000 per year for the use of their image. The cumulative sum was to be paid after they graduated.

During the , the majority of the Ninth Circuit Court upheld Wilken’s ruling on the illegality of the NCAA’s amateurism regulations, but struck down the injunction forcing schools to pay specific athletes up to $5,000 per year. This decision left the college community uncertain on where the courts stood in regards to allowing college athletes to use and profit from their image.

As Oregon’s star basketball player, Sedona Prince, said:

Prince is one of many college athletes who have joined the class action filed earlier this year. Her words resonated with the college athletics community, and acted as encouragement for others to step forward and join the suit. , the law firm spearheading this suit, has opened the case for all active athletes since 2016 and announced that there would be no fee to join the suit or benefit from the settlement or lawsuit.

What’s Next?

While this case has just begun, it presents an opportunity to revolutionize intellectual property law in amateur sports. We may see the NCAA push this case up to the Supreme Court for a final ruling on whether student-athletes should be entitled to compensation for the reputation they craft on the court. If the ruling favours the college athletes, there would be reforms across amateur sports. This includes renegotiating contracts between players, colleges, and the NCAA, the repeal of regulations limiting compensation for image and likeness, and an expansion of intellectual property law more generally. This is definitely a case to keep an eye on.

Written by Adele Zhang, a first-year JD student at Osgoode Hall Law School. Adele is interested in the intersection between IP, Ěýsports law, business law, and employment law.

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The , located in San Jose, California, was built at the behest of Sarah Winchester after the death of her only child and her husband, the late gun mogul William Winchester. Apparently, a medium told Mrs. Winchester to move west from New England and appease the spirits of those who were killed by the Winchester Rifle during the Civil War by building a great house for them.

The Plaintiff owns the registered word mark “Winchester Mystery House” and the design mark based on the Winchester mansion. The Defendant, , produced a film entitled “”. The DVD jacket contained the movie title as well as an image of a Victorian-style building, albeit not the same one as the Winchester Mystery House.

The Plaintiff originally sued on the basis of seven causes of action, three of which were at issue on appeal, namely, 1) use of its trademark (), 2) unfair competition () and 3) interference with contract and economic advantage. The Superior Court granted the Defendant’s motion for summary judgment. The Court of Appeal dismissed the Plaintiff’s appeal on all grounds, however this blog will only touch on the issue of trade-mark infringement.

The Plaintiff claimed that the use of “Winchester House” and the image of the Victorian-style mansion would cause confusion in the minds of the public by leading them to believe that the Plaintiff approved, sponsored, or associated itself with the Defendant. The Defendant argued that its right to freedom of expression provided an absolute defence to trade-mark infringement.

In the United States, freedom of expression is protected by the First Amendment of the U.S. Constitution and plays a major role in limiting the scope of intellectual property rights. The test that is commonly used for balancing the interests of trade-mark owners against those who use the marks in titles for artistic works in the name of freedom of expression arose from . The court in Rogers held that the (the federal statute governing U.S. trade-mark law) would apply to allegedly misleading titles only if the title has no artistic relevance to the underlying work whatsoever or if the title is explicitly misleading as to the source, even if the title has some artistic relevance.

In the Winchester case, it was held that where marks have historical significance and similar marks are used in the title of an artistic work, the Rogers test properly protects both the public interest in avoiding consumer confusion and the public interest in freedom of expression. The Court of Appeal found that the Plaintiff’s marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. Ultimately, the Court held that the use of the “Haunting of Winchester House” title and the Victorian-style mansion passed the two pronged test from Rogers in that 1) they had some artistic relevance to the underlying work and 2) that the title and cover picture did not explicitly mislead as to the source or content of the work; the Defendants did not use the marks as registered, the DVD cover attributed production to other sources and the title related to the content of the movie, which was the story of Sarah Winchester.

You can find a discussion of another case using the Rogers test to balance freedom of expression and trade-mark protection and a general discussion of trade-marks and freedom of expression .

It is well established that freedom of expression is more vigorously protected in the U.S. than in Canada. Nonetheless, courts in Canada have seen the importance of balancing freedom of expression against trade-mark protection (see, for example, , ). Freedom of expression was also at play in a case where a trade-mark for a book title was expunged because it prohibited the public use of the title after the copyright had expired (). As in Winchester, a Canadian court should allow trade-marks to be incorporated into titles when they relate to historically significant works.

Andrew Wayne is a JD Candidate at Osgoode Hall Law School and is currently enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program.Ěý As part of the program requirements, students are asked to write a blog on a topic of their choice.

The post Double, Double Toil and [Freedom of Expression] Trouble for Trade-mark Owners in the United States: A Halloween Tale of Trade-marks and Haunted Houses appeared first on IPOsgoode.

Only one post remains on the and it is tellingly tagged "RIP" and "the dion effect."ĚýDion's lawyers sent Nick Angiolillo, the New 91ŃÇÉ« 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 rightsĚýfrom photobanks or simply cribbed them off a Google search. If the latter, then Celine Dion's cease and desist letterĚýmay 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 lawyersĚýhave the upper hand.

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