Ariel Goldberg is a 1L JD Candidate at Osgoode Hall Law School.

Usually, a dog toy’s squeak echoes throughout a home. A Jack Daniel’s bottle-shaped dog toy called “Bad Spaniels” will be heard at the U. S. Supreme Court and could bark for trademark use in expressive works. Will it bite?

Jack Daniel’s Properties, Inc.’s (“Jack Daniel’s”) petition to the U. S. Supreme Court explains that the case addresses a significant reoccurring tension in trademark and trade dress protection under the U. S.’s Lanham Act: VIP Products LLC (“VIP Products”) runs the e-commerce website . Under the shopping category “”, VIP Products sells an array of dog toys that parody existing brands’ trademarks and trade dress including a Mountain Dew bottle that reads “”, a Baileys bottle called “” and, the toy at issue, a nearly identical Jack Daniel’s Old No. 7 Brand Tennessee Sour Mash Whiskey bottle altered to say “.”

Image from .

Initially, that the “Bad Spaniels” dog toy likely causes consumer confusion and tarnishes Jack Daniel’s marks. On appeal, the decision holding that the likelihood-of-confusion test would not apply because the toy is an expressive work with First Amendment protection of freedom of speech. The Ninth Circuit applied the Rogers Test from the Second Circuit’s (1989) decision. free speech and trademark protection by allowing the use of trademarks in expressive works if artistically relevant and not explicitly misleading. Here, the trademark use was artistically relevant to the , the toy was not explicitly misleading because VIP Products altered the trade dress. The toy had a disclaimer on the back of the toy that stated that Jack Daniel’s was not affiliated.

Jack Daniel’s petition argues that the Ninth Circuit’s “” decision allowing for companies similar to VIP Products to tarnish trademarks and create mass marketplace confusion. Jack Daniel’s that the courts of appeal are divided on this issue, specifically that the Ninth Circuit’s use of heightened First Amendment Protection for humorous trademark use conflicts with the decisions of other Circuit courts. . These circuits have not used the First Amendment and instead applied the traditional likelihood-of-confusion test with consideration towards the humor or parody as a factor against the mark holder. For example, in , the Fourth Circuit held that Haute Diggity Dog’s “ successfully parodied Louis Vuitton’s handbags through applying the likelihood-of-confusion test with humour as a factor.

Essentially, Jack Daniel’s wants the U. S. Supreme Court to create a higher bar for parody works which would create more ease for mark holders to address consumer confusion and dilution from parodies. The main concern is the use of humour to gain immunity. , the academic director of Fordham University Fashion Law Institute, that “every brand with a beloved trademark is worried about seeing cheesy versions of its primary corporate asset used to sell not only dog toys, but also  a vast range of other novelties that, over time, could cheapen the perception of the brand.” In addition, that dog toys are expressive works because its purpose is to be played with by dogs.

However, the argument to raise the bar for parody works is contentious. , a professor at Harvard Law School and author of a brief opposing Jack Daniel’s , highlights that trademark law exists to protect consumers from fraudulent products rather than clear humorous uses of existing trademarks and trade dress. expressions on a canvas are not meaningfully legally distinctive from expressions on a dog toy.

The U. S. Supreme Court decision will be a significant precedent. In Mason Rothschild claimed his fur-covered Birkin bag NFTs, MetaBirkins, satisfied the Rogers Test by being artistically relevant and not explicitly misleading. Clearly, the humorous use and reworking of existing trademarks and trade dress is here to stay making Jack Daniel’s shot at heightened First Amendment protection highly relevant. Time will tell if Jack Daniel’s is barking up the wrong tree.

The post Jack Daniel’s Marks its Territory appeared first on IPOsgoode.

Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 25, 2021 the Japan Patent Office (JPO) Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design ��for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.

Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited of the Japan trademark law in support of their claim.

Gucci that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.

Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and . Even though the decision makers Gucci’s popularity and reputation, they of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.

Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for , “AZIDES” and “PAPAGORIRA”).

Some that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.

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Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Abigail Barlow and Emily Bear combined their talent with their love for the Netflix Original, Bridgerton, to create the 15-song “Unofficial Bridgerton Musical” album. Barlow and Bear went on to become viral sensations on social media and (2022 Best Musical Theatre Album) for their production.

On July 29^th 2022, Netflix the TikTok stars Barlow and Bear in the U.S. District Court in D.C. alleging in violation of 17 and . Netflix Barlow and Bear have benefited from their album’s false association with the Bridgerton brand. Netflix also the position that Barlow and Bear “” the elements of expression, dialogue, characters, and key plot points from Bridgerton.

Allegedly, in March 2021, when Barlow and Bear’s team asked Netflix for permission to record their album, Netflix the activity but said they wouldn’t “”. Per their , Netflix told Barlow and Bear that they would not authorize any live performances of the songs. Despite Netflix’s statements, in July 2022, Barlow and Bear held a sold-out show in New 91��ɫ with ticket prices ranging from $29-$149+. When hearing of the future live shows Barlow and Bear had planned, Netflix that would permit their shows, continued distribution of the album, and any further performances of the Bridgerton-inspired songs; but Barlow and Bear refused the licensing option.

Perhaps more important for Netflix is the promotion and success of their event “Queen’s Ball,” a Bridgerton held across multiple cities. Barlow and Bear’s live show would likely compete with the profits of the “Queen’s Ball.”

Barlow and Bear hold the position that their work is not liable for IP infringement because it is inherently “fan fiction.” Netflix has that “Barlow & Bear’s conduct began on social media, but stretches ‘fan fiction’ well past its breaking point.” Jane Quinn, author of the books of which Bridgerton is based has a difference between flattery through composing songs on TikTok and performing an album for commercial gain.

Barlow and Bear may use the “fan fiction” defence to claim their work is not an infringement based on fair use by proving the elements of fair use: the art is to the original show. Additionally, fan fiction must be for the creator. considered for establishing fair use are the purpose of the work created, nature of the work copied, measure of the material copied, and the impact on the market.

Ironically enough, if this case was filed in Bridgerton home territory, the UK, Barlow and Bear may attempt to use the defence of parody and pastiche. Netflix would likely win their case had it went to court based on ��a very similar case earlier this . ��In the of v. Only Fools The Dining Experience, the court ruled in favour of the creators of the original show because the nature of the “dining experience” was not so removed from the original show “” with it. Similar to Netflix, Shazam had their own musical for which sales could have been diverted by their audience choosing the dining experience instead. The court also found that that the defences of parody and/or pastiche did not apply.

TikTok has proven since the pandemic its unique power to make music, books, and tv/film over-night sensations. The Netflix v. Barlow and Bear case illustrates that companies may have to navigate between having its work become a positive viral sensation ��while still protecting their business interests and the content that its ��team has worked so hard to create.

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Dan Bereskin presenting. Photo by Prof. Pina D'Agostino

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On August 31, 2022, IP Osgoode held its first in-person event in over 2 years and the first instalment of the IP Osgoode Speaks series since 2020. At the event, , the founding partner of the highly regarded IP Boutique firm , gave a lecture on balancing rights to freedom of expression with the rights of IP owners and users.

Being the first in-person event since the beginning of the pandemic, the lecture brought us back to an energised and inquisitive group addressed by Mr. Bereskin’s ease and sense of humour. Dr. Pina D’Agostino began with opening remarks, recognized the novelty of an in-person lecture in 2022 and acknowledged all the work that went into bringing it together.

Mr. Bereskin began his lecture by acknowledging the multitude of perspectives held by different IP enthusiasts, such as academics, IP owners and private practitioners. He recognized that the views he presents maybe termed as him “going over to the dark side.”

He proposed that in IP infringement cases where freedom of expression is a concern, an injunction should not be granted without proof of actual substantial harm or proof of likely actual substantial harm. This harm primarily consists of economic loss and reputational loss. It is noteworthy that, in the absence of proof of economic loss, Mr. Bereskin does not include mere rhetoric of reputational harm, without solid evidence, within the ambit of actual substantial harm.

To make his point, Mr. Bereskin used some interesting examples of how courts have treated parodies of IP rights around the globe. He discussed examples of corporate overreach by IP owners, such as Louis Vuitton and United Airlines.

Upholding Freedom of Expression

Most notably, Mr. Bereskin discussed two unsuccessful actions by Louis Vuitton (“LV”). The first was LV’s suit against artists Nadia Plesner. Plesner had used a sketch of an LV bag in her painting to showcase the commercialising of Darfur genocide victims to appease first world audiences. This painting was later reproduced on t-shirts which were sold to raise money for the genocide victims. LV sued Plesner alleging trademark infringement. Ultimately, Plesner won the case against LV and her rendition of the bag with the court upholding her right to freedom of expression over LV’s . Mr. Bereskin astutely noted that Plesner’s artwork would have been less popular if LV had abstained from legal action.

(Photo credits: )

Mr. Bereskin also discussed LV’s case against Haute Diggity Dog, a company that makes plush toys for pets to chew through parody of famous trademarks of luxury products. One such example is Haute’s “Chewy Vuiton” plush toys. LV sued Haute for trademark infringement and trademark dilution. The US Court of Appeals (4^th circuit), however, that Haute’s products are successful parodies of LV’s handbags, do not raise any likelihood of confusion and are therefore, not infringing.

Priortizing IP Rights over Freedom of Expression

On the flip side, we have the case of United Airlines and Mr. Jeremy Cooperstalk, a Canadian professor who catalogued complaints against United Airlines on the parody website “Untied.���dz�”. United Airlines filed a lawsuit in 2012 alleging IP infringement and confusion through the website which led people to believe that they are registering complaints with United Airlines themselves. This reasoning was dubious at best, since “���Գپ����’s” website denied any allegiance with United Airlines. The Federal Court however disagreed with Mr. Cooperstalk and held his website violative of United’s IP rights. Interestingly, Jimmy Kimmel’s amended slogan (“F**k You”) and accompanying ad for the airline in the US continue to be available due to the US’s stronger protection of freedom of expression.

Takeaways

Through these, and many more examples, Mr. Bereskin made a compelling case for not only recognizing creators’ IP rights, but also the limitations of those rights, especially when they conflict with the right to freedom of expression. Overexpansion of IP owners’ rights poses risks to freedom of expression and should be curbed before these rights go rogue.

For a student who did not get an opportunity to experience Osgoode and IP Osgoode pre-pandemic, the energy and fervour of the lecture hall, the brilliant insights by Mr. Bereskin and the surrounding conversations around his lecture, this lecture served as a unique insight into the power of hallway chatter. Surrounded by snacks and coffee, the lecture was a unique opportunity to learn from an IP legend. It also marked the first step in IP Osgoode’s next chapter where a hybrid system can bring together IP enthusiasts in a most enriching way.

Left to Right: Prof. Pina D'Agostino, Dan Bereskin, & Rhoda Gryfe. Photo by Ashley Moniz

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

On June 8^th 2022, Deputy High Court Judge John Kimbell released his separating copyright in literary and dramatic characters. For the , a fictional character (Derek ‘Del Boy’ Trotter and others from Only Fools and Horses (“OFAH”) was recognized as an independent copyrighted work.

Judge Kimbell ruled in favour of Shazam in the case between Shazam Productions Ltd. and Only Fools The Dining Experience Ltd (among other defendants). John Sullivan is the creator and writer of OFAH, a successful and well-loved TV show. The claimant, Shazam, is a company . Sullivan’s family has that it took Sullivan decades of “personal experience, skill and hard graft to create and develop an imaginary world rich in memorable characters” warranting copyright.

Shazam brought action against the defendants to prevent their continued performance of an unlicensed interactive dining show. The where the performers used the “” of various characters from OFAH. The defendants that they were passing off OFAH characters on the basis that their show is seen as an unofficial tribute..

copyright for the scripts for each episode, the body of scripts taken as a whole which collectively create the OFAH world, the characters, the lyrics and opening theme song of OFAH, and particularly the character of Del Boy and all his specific characteristics.

Notably, in his decision, Judge Kimbell that he did not accept that “the nature of OFDE was so removed from OFAH as to make it obvious that it was not associated with OFAH”.

Copyright of scripts

Judge Kimbell concluded that each script was protected as a dramatic work and not a literary work (as copyrighted works cannot be both per UK law). Dramatic work is as a “work of action, with or without words or music, which is capable of being performed before an audience.”. He also where courts held that a screenplay is a dramatic work, making it a “” to conclude that a script is also dramatic work.

Copyright of scripts as a whole

Judge Kimbell also that the scripts taken as a whole are not literary or dramatic work. Unlike literary works, where each of the individual chapters and the final completed body are separate copyrightable works, there is no proof that Sullivan conceived the ending of the OFAH saga or intended the scripts to be regarded as a “unitary whole.” . Moreover, each script was intended to be performed, filmed, and broadcasted individually rather than ever “intended to be performed continuously one after the other”.

Character of Del Boy

Judge Kimbell concluded that the character of Del Boy the originality and identifiability conditions of the test for copyright protection under EU law as the character is original and precisely identifiable to third parties. With this conclusion, Judge Kimbell found that Del Boy is “” under literary work per the UK list of protected works.

Infringement of protected works

Judge Kimbell considered four basic legal principles listed in . He also considered the . He concluded that the The defendants claimed that their script of OFDE was fair dealing for parody or pastiche but Judge Kimbell was not satisfied to accept this defence when considering the Judge Kimbell also considered the meaning of parody per case law. , Interestingly, that it is “unusual for parodies to take comic works as a subject”. Judge Kimbell concluded that the defendants’ use of the claimant’s work does not qualify fair dealing because it .

For the passing off claims, Judge Kimbell considered the claimant’s arguments in proving . Judge Kimbell that significant goodwill was built and attached to OFAH. He further accepted that the name of the interactive show was liable to “”. Particularly, that misrepresentation could have been avoided if the disclaimer in the terms and conditions page was more prominent, and that the disclaimer in fact proved the defendants were “”. Finally, Judge Kimbell accepted that some members of the public would be

This decision provides added judicial guidance in the UK for defences to copyright infringement for purposes of parody and pastiche. Further, the decision clarifies separation of copyright protection for literary and dramatic works. This decision ��may open the flood gates for more copyright infringement claims for characters used without permission on different forms of media, hence creatives should take precautions when using characters from other works in their media productions.

The post The Iconic ‘Del Boy’ Evolves UK Copyright Law appeared first on IPOsgoode.

Photo by Pineapple Supply Co. ()

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

Given the power of Apple’s brand, it is no surprise that they actively challenge trademarks that resemble their own to protect the dilution of their trademark. But this raises some key questions: Should Apple have the right to challenge all trademarks relating to an apple? What about fruits that bear a resemblance to an apple? In its act of trademark enforcement, Apple seems to be casting the net as widely as possible. According to the , a research initiative seeking to hold large technology companies accountable, Apple filed 215 trademark oppositions, nearly two-thirds more than all the trademark oppositions of Microsoft, Amazon, Facebook and Google.

Apple’s numerous filings are targeting that are seemingly unrelated to the company’s brand, including but not limited to “an organization that supports families of children with autism, a school district in Appleton, Wisconsin, and an online test prep service for nursing students”.

The as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” ��Apple has taken issue with individuals and businesses trademarking anything related to apples, and even other fruits. Those targeted include individuals and businesses providing services that Apple does not, such as . , Apple also filed an opposition to the trademark of Stephanie Carlisi’s stage name “Franki Pineapple”, as they were “both the names of fruits, and thus convey a similar commercial impression”.

Apple’s argument against these companies in mainly emphasizes Apple’s ��significant brand value – as a business grows, so do its efforts to prevent the brand’s dilution. Many smaller parties are unable to respond to opposition because of the costs involved; it can often seem like they have no choice at all. With no opposing voice loud enough to fight back, arguments emphasizing brand values only encourage large companies to continue to enforce their trademarks aggressively and boundlessly.

However, brands attached with the term “trademark bully” can face negative consequences and be reprimanded by the courts for filing “weak” cases. In 2016, Louis Vuitton’s inability to pass off ’s parodical products as a “joke” led to . , the district judge stated that “[i]n some cases … it is better to ‘accept the implied compliment in [a] parody’ and to smile or laugh than it is to sue”. ��For this reason, trademark enforcement can be seen as a double-edged sword.

Image from United States District Court for the Southern District of New 91��ɫ

In the media, world-famous brands are often , and infringers are sympathized with. Still, ��many companies are simply trying to protect their brand’s dilution. Clarifying the thresholds for depreciation of value and distinctiveness of trademarks would be beneficial to ensure that smaller businesses and individuals are not silenced by nets cast too widely and prevent companies from enforcing their trademarks over-aggressively and falling victim to the double-edged sword of trademark enforcement.

The post Which Fruits are Off-Limits? appeared first on IPOsgoode.

Photo by Engin Akyurt ()

Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge ��as an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.��

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.��

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro Santé Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .��

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.��

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91��ɫ achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

Junghi Woo is an IPilogue Writer and a 3L JD Candidate at Osgoode Hall Law School

��

On June 8^th, the Federal Court of Australia ruled that AGL Energy, Australia’s largest electricity generator, , an international environmental activist organization.�� The decision was an impressive win for Greenpeace as the Federal Court found that all but 3 of Greenpeace’s uses of AGL’s logo failed to amount to trademark and copyright infringement. Therefore, no damages were awarded to AGL.

One of the key uses of AGL’s trademark and copyright was Greenpeace’s tagline, “Australia’s Greatest Liability”. From 2019 to 2020, AGL produced of carbon dioxide equivalent emissions and operated Australia’s top two power stations in terms of greenhouse gas emissions.

An interesting reason for the Court’s judgement was that it found such uses amounted to parody and thus did not fall afoul of copyright laws, as it also added,

This case alone represented intellectual property (“IP”) law’s interesting relationship with freedom of expression, with a surprising decision in favour of the “little guys”.

Parody in Canada

The idea of using one’s logo or name to create parody does not solely create legal implications. As seen in the Greenpeace case, it can intersect with one’s freedom of expression, namely, to criticize. The balance between protecting the interests of IP owners and its “users” is a century-old struggle. ,

“The protection of authors, whether of inventions, works of art, or of literary compositions, is the object to be attained by all patent and copyright laws … On the other hand, care must always be taken not to allow them to be made instruments of oppression and extortion.”

Despite no specific legislation addressing the use of IP rights in parodies, the court has addressed the issue in prior cases using existing legislation. In copyright law, the defence of fair dealing can . In fact, this is found in where it states:

“Fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright.”

In trademark law, a trademark owner can invoke s. 22(1) of the Trade-marks Act to argue that such parody will be , after having to establish that their trademark was pursuant to s.4 of the same Act.

The likely Canadian outcome?

The same decision in favour of Greenpeace’s use of AGL’s trademark may be supported by [“Michelin”], where the court ruled that to successfully establish a s. 22 claim, In Michelin, former employees

In terms of copyrights, some uncertainty still exists as to how courts will address Greenpeace’s use as the court in Michelin emphasized that parody is not included in the defence of fair dealing, or even within the scope of criticism due to the intention of the copyright use being to However, it should be emphasized that Greenpeace’s position differs in that it posed true criticism of AGL’s non-environmentally friendly actions, which is beyond mere mockery.

Overall, I believe this Australian step may not lead to drastic changes in Canadian legislation, but I can safely say it is an important precedent for protecting freedom of expression and parody.

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IP Day was a phenomenal experience, especially as a student having the opportunity to meet leaders in the IP field and many of the judges before whom IP cases often come. I was especially excited to attend the Judges’ Dinner, which honoured Justice Roger T. Hughes. The CBA’s Intellectual Property section organised a fantastic event and I certainly hope to attend many more times in the future.

“Just Laugh It Off: Trademark Parody and the Expansion of User Rights” will appear in the upcoming issue of the . The introduction to the paper is excerpted below.

In Canada, the concept of fair dealing has been described as a “user’s right,”[1] as have the other exceptions in the Copyright Act [2]. In CCH Canadian Ltd v Law Society of Upper Canada, the Supreme Court of Canada explained that a non-restrictive interpretation of these rights is integral to maintaining a proper balance “between the rights of a copyright owner and users’ interests.”[3] Previously, the Court recognised that such a balance is a fundamental element of copyright law, stating in �ճ�é��������� v Galerie d'Art du Petit Champlain inc that there is a “balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.”[4] Indeed, this balance has been a feature of copyright cases decided after �ճ�é��������� and CCH.[5] Thus, the conceptualization of the intellectual property rights in copyright operate within the context of the competing interests of creators/owners of works and those third parties who wish to use the works.

The idea of balance between owners of intellectual property and the public’s interests in using that property is not restricted to copyright. The Supreme Court has said that the “patent system is based on a ‘bargain’ … the inventor is granted exclusive rights in a new and useful invention for a limited period in exchange for disclosure of the invention so that society can benefit from this knowledge.”[6] Copyright and patent law offer a trade-off of sorts between the monopolies they grant and the public interest in using the fruits of those monopolies in some way. Of course, there is tension between creators/owners and users because of this balancing act. This struggle led the Federal Court of Appeal to cite the nineteenth-century British case Hanfstaengl v Newnes[7] with approval:

The protection of authors, whether of inventions, works of art, or of literary compositions, is the object to be attained by all patent and copyright laws … On the other hand, care must always be taken not to allow them to be made instruments of oppression and extortion.[8]

Intellectual property law, then, must take note of those who use what it protects and should not extend beyond its prescribed boundaries.

We therefore have a tense balance and a bargain in intellectual property law. Fair dealing is an example of both legislation and courts accounting for this fact. What is conspicuously absent from the law, however, is any express acknowledgement of user rights in trademark law. Trademarks are intellectual property, even if they are “something of an anomaly,”[9] and they are often dealt with by third parties. Trademarks depicted by non-owners might appear in a number of ways, such as in paintings of a university football team,[10] on union literature criticising an employer,[11] or even parodying a canned luncheon meat in a puppet film.[12] Yet, the law of trademarks does not explicitly recognise these dealings or uses as fair (or at least potentially fair) – there is no set of fair dealing provisions for research, parody, criticism, or news reporting[13] in the Trade-marks Act.[14] The absence of such provisions in the trademark realm is indicative of a lack of balance between the public interest and intellectual property owners’ rights. There is the potential for owners to attempt to extend their rights beyond “the purpose of distinguishing or so as to distinguish goods or services.”[15] As Professor David Vaver has noted, maintaining a strong public domain benefits competition, innovation, consumer markets, and the public interest. Intellectual property protection must therefore be carefully circumscribed and should not extend beyond its specified limits.[16] The lack of circumscription for trademarks invites overreach (the potential oppression and extortion mentioned in Hanfstaengl), including in the area of free expression, and the lack of acknowledgement of users creates imbalance. Consequently, it is time that Canadian trademark law recognise a form of fair dealing.

Sebastian Beck-Watt is Senior Editor of the IPilogue and a graduate of Osgoode Hall Law School.

[1] CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13, [2004] 1 SCR 339, at para 48 [CCH].

[2] RSC 1985, c C-42 [Copyright Act].

[3] CCH, ibid. at [48]

[4] �ճ�é��������� v Galerie d'Art du Petit Champlain inc, 2002 SCC 34, [2002] 2 SCR 336, at para 30 [�ճ�é���������].

[5] David Vaver, “Copyright Defenses as User Rights” (2013) 60:4 J.Copyright Soc'y USA 661, at 669.

[6] Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60, [2012] 3 SCR 625, at para 32.

[7] [1894] 3 Ch 109 (CA), at 128.

[8] Canadian Assn of Broadcasters v Society of Composers, Authors and Music Publishers of Canada, [1994] FCJ No 1540, 58 CPR (3d) 190 (FCA), at para 13.

[9] Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR 772, at para 21 [Mattel].

[10] The University of Alabama Board of Trustees v New Life Art, Inc, Daniel A Moore, 683 F3d 1266, 1269–70 (11th Cir 2012) [Moore].

[11] Cie générale des établissements Michelin - Michelin & Cie v. CAW – Canada, [1997] 2 FC 306, [1996] FCJ No. 1685 (FCT) [Michelin].

[12] Hormel Foods Corp v Jim Henson Prods, 73 F3d 497 (2d Cir 1996) [Hormel].

[13] Copyright Act, supra note 2, s 29-29.2.

[14] RSC 1985, c T-13 [TM Act].

[15] TM Act, supra note 14, s 2(a).

[16] David Vaver, Intellectual Property Law, 2d ed (Toronto: Irwin, 2011) at 23 [Vaver, IP Law].

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In 2012, Slimane renamed the Yves Saint Laurent Paris fashion to Saint Laurent Paris. This change might have seemed like an organic part of Slimane’s overhaul of the brand in an attempt to give it a more modern feel, but some took it as a simple act of disrespect towards the man who made the label what it is today. About a year after LGI filed to register the new name, What About Yves created a series of parody t-shirts. “Ain’t No Laurent Without Yves”, the witty catch phrase displayed on Heller’s merchandise, emerged from the uproar caused by the removal of the late designer's first name from the fashion house’s label. Eventually, the house’s creative director decided to from Colette Paris, a high-end French boutique that also happened to stock What About Yves t-shirts. LGI tried reaching out to Heller multiple times at the beginning of 2013 to inform her of the their claims and objections regarding her use of "Ain't Laurent Without Yves." Yet, those correspondences went and Heller's merchandise kept being sold.

In their , LGI states that Heller’s “infringing mark as used on Defendant’s infringing products creates an identical or virtually identical commercial impression to LGI’s trademark due to the similarity in sound and appearance and arrangement.” The plaintiff also alleges that Heller’s use of lesser quality material for her merchandise and an identical typeset for her mark are part of an attempt “to pass [her] infringing products off as [LGI’s] products in a manner calculated to deceive Plaintiff’s customers and members of the general public in that Defendant has applied a nearly identical mark to LGI’s marks to goods of the kind Plaintiff regularly markets and sells.”

The situation in which LGI and Heller find themselves is not the first of its kind. Amy Wang notes that has played an important role in the industry in recent years. A desire to create a new form of luxury that would be more available to customers has led to the rise of a phenomenon that has not spared any of the major players in the market. Brian Lichtenberg, a notable designer in that niche, has parodied many brands including Balmain, Hermès, and North Face. Creatively speaking, the revival of streetwear caused by ironic fashion may be a welcome trend, but does it constitute legitimate legal parody? As Wang's blog points out, the intuitive response to some streetwear designers' work may be to argue that it is protected by the First Amendment, but such a claim calls for nuance.

As the usual defense invoked against trademark infringement and dilution, the two causes of action provided by the Lanham Act, a “” must: (i) “convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody,” and (ii) “ some articulable element of satire, ridicule, joking or amusement.” Ultimately, a successful parody will diminish the possibility of confusion between the plaintiff and the defendant’s marks, the sole presence of a humorous or satirical message therefore not being sufficient to establish the existence of a legal parody, contrary to popular belief.

Historically, some courts have ruled in favour of parodies for First Amendment reasons, regardless of the likelihood of confusion. However, recent����suggests that courts favour trademark infringement rulings for made-for-profit merchandise, as commercial speech is not fully protected by the First Amendment.

At first glance, it appears LGI has strong case. In April of 2013, Heller filed to register “Ain’t Laurent Without Yves” as a trademark, but the United States Patent and Trademark Office (USPTO) the application. They claimed that Heller’s mark was likely to cause confusion with some of LGI’s existing trademarks. As the legality of a parody depends on whether confusion is a legitimate concern and whether the original brand’s value becomes diluted, Heller seems to have failed the first test. Yet, what does or does not constitute parody is determined on a contextual basis by courts. The nature of Heller's merchandise, combined with the known story behind it, might just meet the definition of a successful parody.

This lawsuit will not be the last of its kind. While have decided to embrace ironic fashion, as a way of "making profit from riding the coattails, so to speak, of well known, in demand, and often pricey brands." As a niche that claims to be a response to capitalism and the desire to reform the fashion industry, the turn this trend has taken might just be where the real irony lies.

Aicha Tohry is an IPilogue Editor and a JD Candidate at Université de Montréal

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