Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

In a battle of the stripes, athletic fashion giant Adidas went head-to-head with American luxury fashion brand Thom Browne in a that tested the delicate balance between protecting a company's branding and allowing for creativity and competition in the marketplace. 

At the heart of the case was Adidas' iconic three-stripe design, which the company claimed was being infringed upon by Thom Browne’s four-striped signature. The sportswear giant argued that the stripes were crucial to its brand identity and that Thom Browne's use of similar stripes would dilute the distinctiveness of its trademark and cause confusion among consumers. If successful, Adidas sought and profits earned by Browne’s use of the stripes. However, , a jury rejected Adidas’ allegations, finding no infringement or dilution.

The case can be traced back to 2005 when Browne debuted his “Three-Bar Signature” motif. This prompted Adidas to reach out to the designer in 2007, citing the similarity between the two brands’ designs. In response, Browne added another stripe to his design and launched his “Four-Bar Signature.” Adidas seemingly approved this design, as the sportswear giant stayed quiet for the next decade while Browne produced jackets, ties, socks and athletic wear bearing the Four-Bar Signature.

However, in 2018 Adidas approached Browne about his use of the stripes, claiming that they only became aware of the infringement at that time. Settlement negotiations began but ultimately fell through, and Adidas filed an .

The proceedings of the case were extensive, with both sides presenting a large amount of evidence supporting their respective positions. Adidas presented evidence of the widespread use and recognition of their three-stripe design, and survey evidence suggesting that consumers were likely to be confused by the stripes used by Thom Browne.

Thom Browne, on the other hand, argued that the decade-long delay in bringing forth an allegation was unacceptable. Furthermore, the brands served different markets; Adidas is an affordable sportswear brand, whereas Thom Browne is a high-end luxury brand not centered around sportswear. “Adidas does not own stripes,” said Robert T. Maldonade, Browne’s attorney. The jury ultimately sided with Browne’s arguments.

The trial has set an important precedent in shaping the future of trademark protection and its impact on the fashion industry. The verdict showed that the legal system recognizes the potential for stifling creativity and competition if trademark protection is extended too far, emphasizing the need for a nuanced approach that balances the interests of trademark holders and the wider creative community. The in Adidas' bid to extend its Three-Stripe trademark in 2019 further reinforced these limits, as the court ruled that the trademark lacked "distinctive character". This underscores the importance of being cautious when granting trademark protection for non-distinctive marks to ensure that it does not infringe on the creativity and competitiveness of the marketplace.

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Photo by Buda Photography

Jasmine Yu is a Senior Editor and a 2L JD/MBA Candidate at the University of Toronto.

Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

On November 9, IP Osgoode, Reichman University and Microsoft hosted the first in-person Bracing for Impact Conference since 2019. The conference focused on “The Future of AI for Society.” While AI is full of exciting possibilities, real-world application and integration are relatively nascent. Implementing AI technology in society requires complex interdisciplinary engagement between engineers, social scientists, application area experts, policymakers, users, and impacted communities. At the conference, an esteemed lineup of speakers across disciplines discussed the forms that interdisciplinary collaboration could take and how AI can help shape a more just, equitable, healthy, and sustainable future.

sought to contextualize the promise of AI for the future of urban development and was chaired by Hon. Maurizio Bevilacqua, the Mayor of Vaughan. As an elected Mayor, Hon. Bevilacqua put this panel in the context of AI serving the purpose of improving lives — a goal of the of which he and Professor Pina D’Agostino, Founder & Director of IP Osgoode and Bracing for Impact Conference Chair, were a part. The task force identified Smart City opportunities for improving the city through innovation, communication technology, and mobility management — using initiatives to improve road safety, reduce traffic congestion, and encourage residents to participate in active transportation.

Professor Zachary Spicer: Smart Cities – A Unique Challenge

is an Associate Professor at the School of Public Policy and Administration at 91��ɫ. He examined Municipal governments’ capacity for Smart City Development and AI adoption, focusing on the constraints of resources, scale, and provincial legislation.

Professor Spicer viewed that while Smart City technology can provide various benefits, such as the opportunity to maximize budgets and create efficiencies, they also bring a host of novel challenges. For instance, in the context of applying AI to transportation, Professor Spicer emphasized the importance of considering the potential skills and engagement gaps when procuring Smart City technology within municipalities in Canada. We must ensure that the relevant personnel must have the necessary understanding, skills and resources related to AI technology and data governance.

Dr. Vera Roberts: Marginalized Communities and AI

is the Senior Manager of Research, Consulting and Projects at the Inclusive Design Research Centre (IDRC) of OCAD University. She advocated for people with disabilities, identifying that this marginalized community is often excluded from the AI system development process and therefore inadequately represented. 

Dr. Roberts explained that because AI systems are machines, we tend to view these systems as operating on pure logic and immune to human biases. However, she stresses that we must keep in mind that AI systems learn from human data, which can be flawed. We should shift our focus to examining biases within the actual input data training AI systems and whether they accurately represent marginalized groups. Currently, AI systems are largely trained on data from “normal people,” limiting their applicability to people with disabilities. When data is included on people with disabilities, Dr. Roberts comments that it usually only includes the fact that they are different from the standard population. The IDRC has several ongoing projects, such as , targeting these issues and creating more inclusive AI systems. 

Mr. Keith Hemingway: Bringing AI to Utilities

Keith Hemingway is the Head of Advanced Planning at the In his opinion, the biggest change in the AI space right now is the increased accessibility to data that was previously protected and hidden away. As the utilities industry moves towards e-mobility and the electrification of transit and heating, companies need to turn towards AI for new schemes and frameworks to implement these changes. 

However, the use of AI raises new issues concerning data privacy. For example, to increase efficiency in resolving outages, Mr. Hemingway brings up the possibility of using drones to visually scan pole lines to identify the outage-causing fault. In this scenario, there runs a risk of capturing more footage than necessary – instead of just seeing the faulty insulator, the drone might accidentally capture someone’s backyard, thus infringing that individual’s privacy. Ultimately, it boils down to what exactly constitutes data and how utility companies can balance using AI to improve electrical systems for the public good while respecting data privacy boundaries. 

Professor Guy Seidman: Bracing for the Impact of Autonomous Vehicles

is a Professor of Law at the Harry Radzyner Law School of Reichman University. He was extremely passionate about the impending arrival of Autonomous Vehicles (AVs), their impacts on our daily lives, and their potential legal ramifications. Professor Seidman recognized that mass electric AV adoption can have benefits such as traffic accident reduction, improved air quality, and freed up urban space from a reduced need for parking spaces (assuming that AVs need not be parked). However, Professor Seidman also identified several barriers to mass AV adoption, including technological feasibility and transition difficulties, wherein different demographics have a differing willingness to trust AVs — the more educated tend to be more accepting of AVs.

Professor Seidman does not anticipate complex legal solutions to questions of accident liability when AVs are involved. Rather, he was optimistic that tort and insurance law will naturally evolve to deal with such issues. He viewed that the more significant discussions revolve around public policy around social and economic ramifications of AV adoption. Finally, Professor Seidman also suggested that we should hesitate to eliminate Traffic Law entirely as AVs become more prevalent, as it is arguably the widest form of legal education. Convincingly, Professor Seidman ended the discussion by concluding that these impending issues must be considered now, so that we are bracing for the impact of incoming AI innovation.

The post IP Osgoode presents: AI for the Future of Urban Development – Smart Cities, Transportation and Sustainability (Panel 1 of the Bracing for Impact Conference) appeared first on IPOsgoode.

Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

For all the gamers out there, do you still remember the classic, pixelated games of the 2000s? Gone are the days where fiction and reality were easily discernible, with the emergence of hyper-realistic video games such as , and depicting entire fantasy worlds at a crisp 1080p quality or better.

The video game industry has sky-rocketed in the last decade, especially due to historic amounts of people turning to digital forms of entertainment to wait out the pandemic. In this , game developers must be especially cautious of potential trademark infringements. Two recent U.S. court cases addressed the question of whether depictions of real vehicles in video games constitutes trademark infringement.

Battle of the tractors:

The star of this case is a K-700 tractor. Saber Interactive Inc.(“Saber”) had entered into a licensing agreement with the trademark owner for the exclusive intellectual property rights to depict the K-700 in its video game, Mudrunner. The agreement included the right to enforce the license in court. Subsequently, Oovee Ltd (“Oovee”) released its game Spintires, featuring the K-700 as a playable vehicle. Saber then sues Oovee for unfair competition caused by unauthorized use of the K-700 trademark and trade dress under the American Lanham Trademark Act.

Expressive works are granted expression rights by the First Amendment. Oovee’s use of the K-700 was hence protected as such, as the Court found video games to indeed be expressive works. Accordingly, then, Saber had to satisfy the two-prong Rogers test to bypass this defense by showing that Oovee’s use of the K-700, as follows:

1. Had no artistic relevance to its Spintires game; or
2. Explicitly misled consumers regarding the source of the K-700.

The Court found that Saber “did not explain why Oovee’s use of the K-700 is artistically irrelevant,” and did not satisfy the high bar of “explicitly misleading” in their submissions. Saber argued that because consumers expect that “actual vehicles featured in simulations are licensed,” there arises a likelihood of confusion amongst the public as to the involvement of Saber in Oovee’s game. The Court found that without an explicitly misleading statement, this likelihood of confusion is insufficient to satisfy the second prong. Accordingly, Oovee’s use of the K-700 did not infringe upon any marks and the motion was dismissed.

Humvee v. Call of Duty, aka

The Saber case ruling follows an earlier case concerning the appearance of Humvee vehicles in the Call of Duty franchise games. Call of Duty, created by Activision Blizzard, is a first-person shooter game simulating a modern warfare setting with Humvees depicted throughout the game. AMG sued Activision Blizzard for these depictions since Blizzard did not acquire authorization for such uses. Like the Saber case, First Amendment protection applied to the video game, and this protection was subjected to the Rogers test.

Ultimately, the Court found that the use of Humvees was artistically relevant to the game because they evoked “a sense of realism and lifelikeness” to the players. The second prong, however, was unmet because despite there being survey evidence of confusion, the confusion itself did not arise from Activision Blizzard’s actions. The case was dismissed in favour of Activision Blizzard.

Implications

As more of our world moves online, these such lawsuits help guide the direction of developers designing the digital space. To make video games more immersive and realistic, developers would have to bring in real-life characteristics and these precedents help to shield designers from tedious trademark litigation. However, as we have seen from the Orton case , similar protection may not be granted to copyright infringements in games. Regardless, we expect further guidance as the courts continue to clarify how the nuances of IP law apply online.

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

Imagine a Birkin bag – an iconic, timeless piece that arguably embodies luxury. Now make it digital, cover it in fur and sell it as a non-fungible token (NFT) called “MetaBirkin” for at least (about $6900 Canadian). Does this count as an artistic expression protected under First Amendment rights of expression and speech, or is it a trademark infringement upon a beloved fashion icon? This is the issue at the core of the ongoing lawsuit.

Brief Timeline of the Lawsuit

January 14^th, 2022 – Hermès files a complaint

Catching wind of the furry MetaBirkin NFTs, Hermès filed a trademark infringement and dilution lawsuit against Mason Rothschild, the creator. In their , Hermès claims that the label “MetaBirkin” infringes upon their “BIRKIN” trademark and likely causes confusion in the minds of consumers that Rothschild’s products were “authorized, sponsored, or approved by Hermès.” Further details about this initial action can be found in our earlier article .

February 9^th, 2022 – Rothschild files motion to dismiss the action

Legal counsel for Rothschild maintained that the NFTs constituted protected expression under the test set out in , which held that the use of a famous trademark is protected from trademark infringement if 1) the name is “minimally artistically relevant” to the product and 2) that the use of the trademark does not explicitly mislead consumers as to source or content of the product.

Regarding the first prong, that the term “MetaBirkin” was minimally artistically relevant to his project of questioning the nature of luxury and value and bringing awareness to the prevalence of animal cruelty in the fashion industry. Regarding the second prong, Rothschild’s counsel pointed to the lack of explicit mention of Hermès in the advertising of the NFTs. Rothschild’s counsel further argued that the First Amendment right of speech and expression outweighs the “slight risk” of consumer confusion.

that Rothschild’s usage of “MetaBirkin” was akin to a trademark, namely to “brand a product line, and to attract public attention and signify source.” This form of use is outside the scope of First Amendment protection, making the Rogers test inapplicable.

May 18^th, 2022 – Judge Radkoff denies Rothschild’s motion to dismiss

Judge Radkoff found that the Rogers test applied because the . Judge Radkoff that “[because] NFTs are simply code pointing to where a digital image is located and authenticating the image, using NFTs to authenticate an image and allow for tradeable subsequent resale and transfer does not make the image a commodity without First Amendment protection.”

However, the motion was ultimately denied because the Hermès had filed adequate evidence (such as Rothschild’s statements in public interviews) to support the allegation that the label was artistically relevant and explicitly misleading to consumers. Rothschild appealed this decision, which was subsequently

October 8^th, 2022 – Hermès files a motion for summary judgement

In a newly filed motion, the instead of the Rogers test, which asks: 1) whether the plaintiff’s mark (“BIRKIN”) is entitled to protection and 2) whether the defendant’s use of the mark (“MetaBirkin”) is likely to cause consumer confusion. Hermès argues that Gruner is the appropriate test given the recent development of “undisputable facts” that pushes the First Amendment considerations out of the question.

The facts that Hermès points to include: the similarity between the parties’ marks, evidence of actual confusion amongst consumers, and the fact that both parties are selling the same product, albeit in different universes. Counsel for Hermès claims that a summary judgment on the action should be granted due to the clear and undisputed nature of the material facts.

The Big Picture

All eyes are on the court as they navigate this new digital terrain and attempt to balance the freedom rights of creators against the IP rights of consumer brands. As Mr. Dan Bereskin emphasized in his , an IP owner’s rights should not go unchecked for fear of imposing a “chilling effect” on artists’ creative freedoms. On the other hand, the metaverse presents a new avenue for trademark infringement that is difficult to police, given the ever-evolving digital landscape. Hopefully, the continuing battle between Hermès and Rothschild will provide some guidance about the legal relationship between brands and creators in this new digital world.

The post Trademark Law Moves Online: “MetaBirkin” Updates appeared first on IPOsgoode.

Nancy Chen is an IPilogue Writer and a second-year JD/MBA Candidate at the University of Toronto.

In 2020, COVID-19’s emergence prompted scientists across the world to race against time to develop a vaccine, with the pharmaceutical giants Moderna, Pfizer and BioNTech (“Pfizer/BioNTech”) leading the way. Two years later, as the world adapts to the new normal and vaccine supply is no longer a preeminent issue, against Pfizer/BioNTech for unlawfully infringing upon Moderna’s patented mRNA technology in the making of their COVID vaccine. The was filed on August 26, 2022 in the United States District Court for the District of Massachusetts as well as the Regional Court of Düsseldorf in Germany.

Moderna’s position

According to before the District of Massachusetts, Moderna was founded in 2010 “on the promise of developing mRNA technology to create a new generation of transformative medicines.” The company has since been singularly focused on developing all aspects of mRNA medicine, cumulating in the process.

because of their extensive experience researching mRNA technology and using their patented mRNA platform, they were “uniquely positioned” to respond to the COVID-19 pandemic. As a result, Moderna’s mRNA vaccine, Spikevax, successfully reached clinical trials within just two months after the publication of the genetic sequence of the virus. Other were predicting that vaccine development could take years.

Infringement Allegation

In a , Moderna stated that they believed Pfizer/BioNTech unlawfully copied two key features of Moderna’s patented technologies in the development of their mRNA vaccine, Comirnaty. Specifically, Comirnaty contains the exact same chemical modification as Spikevax and it was developed using Moderna’s patented approach “to encode for the full-length spike protein in a lipid nanoparticle formulation for a coronavirus.”

Moderna also that Pfizer/BioNTech did not have the same level of experience as Moderna in developing mRNA vaccines, and despite testing four different vaccine candidates that did not use Moderna’s patented technology, they ultimately knowingly copied Moderna’s platform.

Pfizer/BioNTech addressed the allegations in a , stating that these lawsuits were unexpected given that Comirnaty was based on BioNTech’s own proprietary mRNA technology. They intended to “vigorously defend against all allegations of patent infringement.”

In recognition of the need for ensuring vaccine access, that it will not seek to remove Comirnaty from the market or prevent future sales of this vaccine. The company will also not seek compensatory damages from sales occurring before March 8, 2022, the date the company considers to be the end of the pandemic. Sales to the U.S. government or to a list of 92 low and middle-income countries in the Gavi COVAX Advance Market Commitment will also be excluded from damages.

It is, however, seeking monetary of up to three times the amount of compensatory damages found in relation to all other instances of infringement including reasonable royalties and/or lost profits, together with interest, costs, expenses, disbursements.

Looking forward

Patent lawsuits typically take years to resolve and this particular action is further complicated by . Pfizer/BioNTech has a solid defense by arguing reasonable reliance on Moderna’s to not enforce patents while the pandemic continues. Although Moderna perhaps made this promise in the hopes of an end date to the pandemic, this date will likely be contested given the ongoing nature of COVID-19.

The outcome of this legal dispute will have implications for the future uses of mRNA technology, which boasts the potential for future vaccines against a myriad of diseases such as influenza and HIV. If Moderna succeeds, there may be a chilling effect in biotech development which may be detrimental in the event of another pandemic. It would be interesting to see how courts construe public promises and their validity against patent rights, or if broken promises may affect a company’s goodwill in the eyes of the public.

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