Founded in 1851 in Rhode Island, United States, is a global business which produces basic cotton clothing and textiles for customers of all ages. The brand has become well known in part due to its comedic , which often feature actors dressed in apple and grape costumes serenading potential customers about the benefits of “waistbands softer than the rain.” The commercial characters are tied in with the company’s familiar apple, currant, and grape logo. As you may have noticed, it becomes quite difficult to describe the brand without referencing the word “fruit.” This is one of the reasons Fruit of the Loom recently in European court that it should be capable of exclusively appropriating the generic word “fruit” as a mark.

Fruit of the Loom had registered the word sign “fruit” in the European Union in 1999, but an Italian intervener, Blueshore Management SA, filed an application to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for revocation of that mark in 2006. Blueshore based its application on Article 51(1)(a) of European Trademark Regulation No 207/2009.  Article 51(1)(a) states that a mark may be revoked if it is not put to genuine use in connection with the goods in respect of which it is registered. The mark was then cancelled by OHIM in 2008. Fruit of the Loom appealed this decision several times. The company failed to obtain a favourable outcome, as the applicant’s evidence indicated that the only marks to consistently appear in promotional materials are the fruit-bearing logo and the indivisible phrase “fruit of the loom.” Contrastingly, none of the applicant’s figurative marks incorporate the “fruit” element on its own.

In its latest appeal, the clothing company relied heavily on Article 15(1)(a) of European Trademark Regulation No 207/2009 in order to persuade the Board of Appeal to reinstate the “fruit” mark. Article 15(1)(a) states that a mark may be deemed ‘used’ even in situations where a mark is presented differently, so long as the owner leaves the distinctive character of the mark unaltered. The applicant submitted that it had genuinely used the “fruit” mark as part of its overarching branding strategy because the word is not only in the company name, but it also describes the company’s logo. The company went further, stating that the word “fruit” was the most distinctive element of its brand internationally, as the phrase “fruit of the loom” is not understood in non-Anglophone languages.  This argument is quite strong, as the word  “fruit” finds nearly identical equivalents in many European languages, leading to quick identification of a particular brand.

The Board of Appeal was not sympathetic to Fruit of the Loom’s last ditch appeal effort, and with good reason. Article 15(1)(a) is viewed by the European intellectual property community as a tool meant to aid proprietors who want to change insignificant aspects of a trademark. This makes sense, as it would be burdensome on a company to re-register a trademark that had merely undergone a stylistic facelift. The rule is not meant to be used by proprietors as a way to avoid the obligation of using a registered trademark by relying on ownership of a similar mark covered by separate registration.

In this case, the Board of Appeal concluded that Article 15(1)(a) was not helpful to Fruit of the Loom, as the mark “fruit” is not merely a variation of the mark “fruit of the loom,” but a distinctive mark on its own. The addition of the words “of the loom” altered the “fruit” mark in a distinctive way (the key wording of Article 15(1)(a)) because it created a unique phrase that does not exist in any language. The phrases are thus not equivalent. The Board also concluded that Fruit of the Loom’s international linguistic argument was invalid. While it is true that the word “loom” has no counterpart in non-Anglophone languages, the uniqueness of the word is bound to attract consumers. Thus, the word “fruit” was seen as having equal importance as the word “loom” in advertising material.

This decision is particularly important to international brands that are trying to fight against similarly-sounding competitors.

Elena Iosef is a J.D. candidate at Osgoode Hall Law School

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The symposium featured many panels on topics ranging from a presentation about international legal instruments to a discussion regarding risk management tactics that museums and auction houses can implement. Attendees also heard heartwarming and sometimes heartbreaking tales from panels discussing the restitution of Nazi-looted art. One restitution project helmed by Concordia University involves a to help Max Stern’s estate reclaim artwork from various museums and art traders. Throughout the symposium, however, the crowd was consistently buzzing about the current state of art and cultural property theft investigations.

The popular law enforcement panel first featured Bonnie Magness-Gardiner, subject-matter specialist and program manager of the of the Federal Bureau of Investigation (FBI) in Washington. As Magness-Gardiner explained, the FBI Art Crime Team (ACT) was established in 2004, partly as a response to the issues encountered during the Iraq War, when the Baghdad Museum was looted, stripping it of cultural artifacts dating back to the dawn of civilization.  ACT is composed of 3 permanent agents, 11 temporary agents and 3 special trial attorneys assigned by the United States (US) Department of Justice to assist in prosecutions. Since 2004, ACT has been able to recover approximately 2650 items valuing over $153 million.

One of the reasons ACT has been so successful in recovering stolen works is in part due to the creation of the National Stolen Art File (NSAF). The NSAF is a publicly searchable, computerized index of stolen art and cultural property as reported to the FBI by law enforcement agencies throughout the US and the world. This resource enables art buyers and owners to check that pieces being purchased are not reported stolen. Years ago, Canada updated a similar Registry of Stolen Artifacts (ROSA), but has since discontinued the practice. While smaller databases such as that of Concordia University exist to help locate missing items, Canada lacks a nationalized reporting system.

The lack of institutional reporting of art and cultural crime is quite detrimental, as it not only makes recovery difficult, but also leads to the minimization of an important issue. Security expert Robert Marentette reported at the symposium that Canada ranks as 13^th in the world in terms of art crime, with over 2000 works reported stolen in 2009. As well, due to disposable wealth and a prevalence of auction houses and dealers, Canada and the US have become some of the largest consumer countries for cultural property stolen worldwide. Martin Finkelnberg, head of the Art Crime Unit of the Netherlands Police Agency agreed that art crime is not given the international priority it should be. Finkelnberg explained that security deficiencies have often led to important artifacts being lost (embarrassingly) to bumbling thieves. Attendees were surprised to learn that most thefts are not committed by George Clooney and Brad Pitt lookalikes with complex plans.  In reality, opportunists and individuals in positions of trust commit the majority of reported art crimes. As Marentette stated, a painting or artifact can be stolen in as little as  with very little planning.

The ease with which stolen art can be entered into legitimate trade is also troubling. Magness-Gardiner explained that there are currently no special regulations regarding the sale of art in North America. Buyers must request a record of ownership, or provenance, as there is no requirement for a title to be attached to any item.  Once a piece of art enters the hands of a legitimate establishment, thieves are extremely difficult to trace, leaving galleries and museums without compensation if artwork is removed from their possession in later investigations.

The take-away from the symposium was certainly that Canada, and indeed the world, is not doing enough to protect our artistic and cultural artifacts. While security agencies such as the RCMP’s Cultural Property Division and ACT are growing larger and more skilled, more needs to be done in order to preserve our artistic and cultural identities.

Elena Iosef is a JD candidate at Osgoode Hall Law School. 

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Ms. Bonnie Czegledi of Czegledi Art Law and Mr. Justice Patrick Healy of the Court of Quebec, Criminal and Penal Division, Montreal will moderate the symposium, which will have in its presence key international experts in the field of art and cultural crime.

On Friday, attendees will be introduced to the problem of archeological theft, antiquities and Nazi looted art before a presentation regarding Canadian international legal obligations regarding cultural property. The day will end with a discussion regarding cultural heritage crime investigations. On Saturday, the symposium will shift its focus to risk management and the gathering of evidence in criminal prosecutions of cultural heritage crimes. The event will finish with a guided tour of the Textile Museum of Canada.

For more information regarding the upcoming symposium, please visit  . We will be covering the event later on this month, so stay tuned!

Elena Iosef is a JD candidate at Osgoode Hall Law School. 

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Unique to the US, termination rights allow an author to reclaim ownership to their creation from a publisher after 35 years, “notwithstanding any agreement to the contrary.” This means that starting in 2013, recording artists and songwriters can begin to regain control over work they signed away rights to at the start of their careers. US legislators instituted termination rights in an attempt to help authors who may have been locked into unfavourable and exploitative deals at the beginning of their career.

In the case at hand, the song publishing companies Scorpio Music and Can’t Stop Productions tried to prevent Willis from invoking his termination rights with a two-pronged attack. The companies claimed that the songs in contention were created over the course of his employment. Following this logic, the songs could then be classified as “works for hire,” which are an exception to termination rights. The publishers’ legal team eventually withdrew this argument. Copyright experts that this line of reasoning is inherently weak, as recording artists from the 70s and 80s are likely to be seen by courts as independent contractors rather than employees. The companies also contended that as a co-author of the songs, Willis had “no right, title or interest in the copyright” and thus lacked legal standing to invoke termination rights. On this second point, the court ruled that Willis had sufficient standing.

The case at hand is particularly important for several reasons. To begin with, it is the known of dealing with termination rights with respect to music publishing. This case will certainly not be the last, as famed performers such as Tom Petty, Bryan Adams, Tom Waits and Loretta Lynn have to regain control over some of their compositions once 35 years have elapsed since their creation. Secondly, the case sets precedent that termination rights will be upheld even if an author of a work was not the sole contributor to the creation.

So what does this ruling mean for the musical landscape? For one, Mr. Willis’s case should have record companies shaking in their boots. As it has been , the music industry is in turmoil. Financial analysts have that the music business is worth less than half of its value ten years ago. One way that recording companies have been able to stay afloat has been through the use of back-catalogues to generate profits through licensing. Without control over important back-catalogue works such as “Back in Black” by AC/DC (currently owned by Warner Music Group), “The Wall” by Pink Floyd (Sony and EMI) and “Thriller” by Michael Jackson (Sony) it is likely that record companies will suffer even greater financial losses.

Record companies should also be aware that it is unlikely that they will garner significant sympathy from judges should they choose to litigate against artists. While they have indeed invested money, time and resources in developing the value of copyrighted material, record companies have been notoriously artists for decades and continue to do so. Thus, the concerns 1970s litigators had about under-compensation of artists for creative work still exist. It is unlikely that record companies will be successful in their legal battles while termination rights still have a purpose. Moreover, the termination rights issue has been in the companies’ sights since 1978. The fact that record labels, both major and independent, have failed to come to a unified position on this issue signifies companies’ unwillingness to simply re-negotiate higher royalties with artists in order retain song rights. Lack of negotiation and litigation against artists will likely attract negative publicity and add to the public’s perception of record labels as “” villains.

While the Willis case is a win in the artists’ corner, many questions remain unanswered: can foreign groups such as Led Zeppelin exercise termination rights on their American recordings even if their original contract was signed in the another country? Will the “works for hire” argument be successful once it is formally adjudicated? What will the court decide is the extent of co-authors’ interests in various compositions?

Elena Iosef is a JD candidate at Osgoode Hall Law School.

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