I sat down in Starbucks just a few days ago, joe in hand, to get some work done. Soon after, my ears perked up as the song “Rum and Coca Cola” floated through the coffee shop. Curious as to who would be listed as the author, I whipped out my phone and hit the Shazam button. Sure enough, a glistening album photo of the Andrews Sisters popped up on my screen.

The song by the American trio shot to number one on the Billboard’s pop hits chart on May 16, 1945. Copyright was registered to Morey Amsterdam in the United States. However two Trinidadian composers, the prominent calypsonian Lord Invader and his associate Lionel Belasco, claimed original authorship of the song’s melody. They claimed that after composing the song in the early 1940s, it was popular among locals during which time Amsterdam visited the island. After a hard won legal battle the plaintiffs were compensated, but Amsterdam still retained copyright. This means that today, it is Amsterdam’s estate that benefits from Starbucks playing a Trinidadian song.

This is just one example of why copyright and original authorship disputes are often also intertwined with issues of political economy, collective authorship and cultural appropriation. My LLM research uses this kind of logic to think about new ways of imagining copyright protection of works of mas in Trinidad and Tobago. This is mainly because the issue of how to protect mas, short form for “masquerade” and exhibited by the folkloric pairing of costumes and sound, poses a challenge to artists and the legal community alike; it is essentially a collective work with no single author and it goes against the very grain of what authorship is supposed to be. In other words legal rationale for mas is harder to pin down than the “Rum and Coca Cola” example. It requires an ingenious way of thinking about the philosophical underpinnings of copyright law to create a plausible policy proposal.

The specificity of a work of mas poses a particular complication for normative copyright claims in Trinidad. This is because a work of mas is not tangible. It is a performance that brings together the costume designer, bandleader, sound recording, choreographer and performers to produce an original creation. A work of mas is a performance which, although featuring original artwork, has a low threshold for certain criteria (such as originality and fixation, “two of the core requirements for securing copyright”[2]). Sharon Le Gall’s exploration of the steel pan, “considered the most important acoustic instrument of the twentieth century, arising from an urban, black underclass,”[3] presents a parallel discussion. It contemplates how the philosophies underpinning global IP practices can be challenged; “the justificatory bases for the grant of patents, particularly utilitarian theories for the encouragement of inventive activity, do not jibe with the origins of the steel pan.”[4]

Carnival stakeholders are now grappling with how to create a copyright policy that understands the complexity of works of mas and which can duly reward its creators. What complicates the matter is that mas has already spread with the Trinidadian diaspora so that people can find mini versions of the Trinidad Carnival worldwide. In this sense, the carnival arts have already been exported from Trinidad. Trade policy analyst Keith Nurse proposed a strategy for the IP protection of the Trinidad Carnival that would expand its industrial and export development where it already has currency in a global market.[5] A recent report published by the Caribbean Development Bank attributed increased interest in IP to “the continued movement of countries to an information-based economy.”[6] However, it states, there is a lack of education in the Caribbean culture industries about the translation of IPRs into economic gains.

Similarly economist and WIPO consultant Vanus James considers the contribution of copyright and related rights in the protection of works of mas to industry.[7] He uses works of mas as a case study to consider how copyright infrastructure can support the unique demands of Trinidad. He proposes growth in labour and import productivity to make Trinidad more competitive in the copyright sector.[8]

So, then, would a copyright policy to protect mas travel from the Caribbean to Nottingham to Miami to Toronto? And what about mas that is only inspired by Trinidadian culture but is arguably not Trinidadian? In my research I take a regional approach to copyright policy that follows the trend of regional trade and economic partnership agreements. In part I was inspired by the works of Eric Williams, renowned Caribbean nationalist. I also echoed the works of Le Gall and Suzanne Burke who call for the integration of preservationist strategies into a copyright policy.[9]

There may be arguments that one need not create more law. For example David Lange calls for benign neglect in the case of folklore and traditional knowldge where an increase in policy could be seen as too intrusive or complicated.[10] In his words, “[w]e would be well advised to act by not acting. We should let sleeping dragons lie.”[11] There is some truth here; overcompensating for a dearth in policy could result in a complicated minefield of minutiae. However the question remains whose dragons are made to lie while other dragons get to play with their fire. It is in this spirit we can think about the copyright economy of any work based on folklore or traditional culture.

Terrine Friday is an LLM graduate of Osgoode Hall Law School. She is currently an assistant for the human rights Partnership Development Project at Osgoode. Her recent research includes media policy in the Middle East and North Africa at the LSE and as a visiting student at the University of Oxford.

The post Copyright Economy: Protecting ‘Works of Mas’ in Trinidad and Tobago appeared first on IPOsgoode.

The theme of the conference Law Culture Critique was organized into an array of extremely interesting panels that were categorized into various sub-themes including music, culture, gender, art and commerce. The call for papers explicitly encouraged the participation of graduate students, artists and community activists and attracted participants from both international and national institutions.

Distinguished Keynote Speakers included , Professor at the University of British Columbia, author and filmmaker, and Professor , international legal scholar and Chairperson of the Centre for International Legal Studies at Jawaharlal Nehru University in New Delhi, who attracted wide audiences and captivated them with their respective talks. presented a particularly inspiring and timely paper on the myth of corporate social responsibility, “Good Corp, Bad Corp: Corporate Social Responsibility and the Breaking of Society.” He argued that corporations are inherently created for the purpose of economic gain and therefore our reliance on them to fulfill selfless acts through their branding strategies of social responsibility is naïve. His presentation was extremely relevant in light of the devastation that claimed the life of over one thousand Bangladeshi people working in substandard conditions, producing clothing for Loblaw’s Joe Fresh line.

***

Fittingly, based on the theme of the conference, there were several papers concerning intellectual property law including that of panelist , a SSHRC Postdoctoral Fellow at McGill University, Department of Art History and Communications Studies who presented an intriguing paper on the use of copyright policy in the first panel, entitled Law, Symbols and Visual Cultures. Her presentation “Framing the Open: Photography and the Digital Circulation of Israeli Memory” commented on the practices of Israel’s due to the changes made to its licensing policy to create ‘open access’ for the digital images displayed on its website. These policies have the effect of allowing the free access to these digital images while simultaneously resulting in their control and prevention for political uses. The licensing policy was therefore not solely to ensure protection of the creator’s rights or for the purpose of monetization, but rather a tool to prevent political use. Although the content of the images were not at issue, it was the context in which the content would be used that was problematic. The :

“Altering the photograph or using it in any way that harms the name or the reputation of the State, the Government Press Office or the photographer.

Using the photograph for commercial advertising or political activity.”

***

Later that afternoon, , IP Osgoode member and Professor of Law at Osgoode Hall Law School, , Banting Post-Doctoral Fellow in Law and Culture at 91��ɫ, and Hip Hop artist and McGill Law School DCL Candidate, were featured in a thought-provoking roundtable discussion on Music, Law and Theory. Moderator Ali Hammoudi, PhD Candidate at Osgoode Hall Law School and Co-Chair of the GSLA, directed the debate towards hip-hop’s sampling culture.

Sampling is a technique that has, in several American cases, been held to infringe the rights of copyright owners by the courts. The panel confronted the practical, legal, and cultural norms concerning creation, reproduction, originality and attribution. Professor Craig laid the solid doctrinal foundation of these concepts in discussions on substantial taking, fair dealing, and the balanced originality approach enunciated in , while Martin challenged important contentions concerning originality and creative labour, the blurred lines between re-use and copying, and self regulating social norms. Salman presented information about the norms that govern the hip-hop community: hip-hop artists do not sue each other over the use of each others' work largely because sampling is an accepted practice. Quite frankly, as Salman put it – ‘they don’t care’ because it is considered to be an honour to be sampled rather than the appropriation of their work. For this reason, hip-hop artists do not expect to be remunerated for the use of these samples. It seems that in the context of sampling, the hip-hop community relies on social norms that do not always reconcile with the legal norms that corporate owners rely on.

***

A IP topic several years ago, graffiti returns to the forefront due to the cancellation of yet another in an Ontario art gallery because of the uncertainty surrounding graffiti artists’ rights in Canada. Dr. Laura Petican, an Art Historian, and I explored the medium of graffiti art historically, culturally and legally. Laura began with a discussion of Jean-Michel Basquiat and Banksy, whose works have not only transcended the ‘label’ of illegality, but have also become revered as fine art. The context of their street art (graffiti) however, continues to be defined as ‘vandalism’. Graffiti receives intellectual property protection when legal (i.e. when authorized) whereas the question remains “open” when it is not. As argued by , Professor at the University of Ottawa Faculty of Law, in her blog article entitled :

“There is no question that graffiti may constitute an “artistic work” within the meaning of the Copyright Act. It is an interesting and open question whether copyright can be enforced in illegal works . . . .”

Although the artist is vulnerable in the context of the illegal street art he or she produces, in the gallery (what is referred to as the ‘white cube’), their works are considered to be legal, artistic and protected. This issue has not yet been explicitly addressed in the Copyright Act.

Coincidentally on the day of our presentation, the that a mural created by Banksy in 2012, which was subsequently physically removed from the building earlier this year, will be put up for auction for a second time in June “alongside pieces by Damien Hirst [and] Andy Warhol . . . .” The piece entitled “Slave Labour” was a ‘gift’ to a community in London. When the piece was from the community and put up for auction in Miami in February 2013, it was expected to sell for up to $700,000 USD, but was pulled due to the public outcry. No legal action has been taken yet. Although the removal of the wall is a question of property rights (no reproduction was made), this example highlights the parameters that define legal and illegal art.

***

, LLM Candidate at Osgoode Hall Law School, Co-Chair of the GLSA, and panelist, presented a fascinating paper on the implementation of creator rights and the legal infrastructure of copyright in Trinidad and Tobago. In particular, she commented on the evolution of hybrid art forms and focused on works of mass. She interrogated the ways in a particular conception of Trinidadian culture could be ‘protected’ within the existing framework of international cultural protection. Rather than side with one particular approach, she stressed the need to further investigate the social issues that inform copyright law and practical implications that arise therefrom.

***

On the same day, , Professor at the at the Université du Québec à Montréal, and I illustrated the way in which fashion designers attempt to define their work as either artistic, industrial design or both. We compared the perspective of fashion designers to the boundaries of subjectivity and objectivity used by the courts in order to determine the qualification of artistic work based on the intent of the artist in light of the recent United Kingdom Supreme Court case of . What is commonly followed in Canada is the objective standard in DRG v Datafile (1987), 18 C.P.R. (3d) 538. , Professor at the University of Ottawa, Faculty of Law and , Director of the Intellectual Property Program at Vanderbilt Law School, co-authors of (2d ed), suggest that

“[t]he objective test in DRG, which defines “artistic work” as a “generic description of the type of works … which find expression in a visual medium” is preferable to tests based on more subjective criteria such as the author’s intent, the audience’s perception of the “artistic-ness,” or evaluations by art experts or judges of aesthetic merit or value.” (Gervais & Judge, p 105)

In Professor Beaudoin’s experience, whether a fashion designer decides to create ‘artistic work’ rather than ‘industrial design’ is a difficult question that only he or she can determine.

***

Unrelated to intellectual property law, some presenters used artistic mediums to investigate and interpret ‘law.’ In the panel entitled Theorizing Law and Art, , who recently completed his MFA in Documentary Media at Ryerson University presented a paper based on his entitled Defenders. Dan’s exhibition consists of interviewing and “paint[ing] a living ethnographic portrait of Canadian and American criminal defence lawyers in  . . . Detroit, New 91��ɫ, and Toronto.” He used images and videos in his presentation to portray the intricacies of the criminal justice system by allowing viewers to observe “criminal defense attorneys” from a different perspective. The Defenders exhibition remains at the until May 25, 2013.

***

The conference embodied an exceptional fusion of carefully curated panels, topics that were diverse yet intertwined and a wide representation of scholars and artists. The Osgoode Hall Law School GLSA organized a very professional, accessible and personable event. I look forward to attending next year!

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post Law, Culture, Critique appeared first on IPOsgoode.

In the case of , appellate court justices José Cabranes, Chester Straub, and Debra Livingston reversed in part the lower court’s decision that Louboutin could not trademark the colour red on the grounds that a colour can serve as branding and thus have a “secondary meaning in the public eye.” See the IPilogue’s previous coverage of this issue , , and .

“We hold that the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore error,” the judgment reads. “We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand [..] and is therefore a distinctive symbol that qualifies for trademark protection.”

This comes after the lower court denied Louboutin’s request for an injunction that would require rival fashion house Yves Saint Laurent (YSL) to stop manufacturing its . Though the appeals court allowed Louboutin a partial win, it did uphold the lower court’s finding that an entirely monochromatic red shoe from a competitor does not infringe upon Louboutin’s trademark rights.

Under the Lanham Act, which sets out U.S. trademark law, the “.” As such, it seems reasonable that Louboutin would be granted sole authority to manufacture a shoe bearing its signature style. However the court limited Louboutin’s “Red Sole Mark” as per section 37 of the Lanham Act, which gives the court power over trademark registration. This means the Red Sole Mark prescribed by the court is limited “to a red lacquered outsole that contrasts with the color of the adjoining ‘upper’.” In other words Louboutin cannot trademark the colour red, nor can they claim a particular shade of red as its logo--which still allows for the possibility of . That means competing brand YSL has the right to manufacture its Louboutin look-alike because it does not contravene the Red Mark Sole limit as set out.

In Canada, colour can be claimed as a feature of a particular trademark and thus protected if that specific colour is held to be distinctive; colour alone cannot satisfy the application for a trademark and no entity can claim an exclusive right to it. This follows Smith, Kline & French Canada Ltd. v. Registrar of Trade Marks (1987) in which the Federal Court of Canada found that colour, in conjunction with other defining features such as shape and size, could qualify as intellectual property.

Similarly, the Louboutin judgment cited in which the court found that Jacobson’s green and gold-coloured dry cleaning pads infringed on Qualitex’s original trademarked product. The 1995 judgment stated that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark” because it “can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function.” This means Louboutin cannot claim exclusive rights to shoes manufactured in red specifically because the colour of the entire shoe is not a defining feature of it.

This triumph-in-part could mean further ambiguity in the interpretation of trademark law; both Louboutin and YSL won in part for the right to manufacture shoes of a certain style. This means that by analogy either interpretation could be used to support a future case for/against a particular trademark by applying colour as a defining feature, or to defend a claim of unfair competition.

Since trademarks must adhere to national legislation, jurisdiction is also of increasing importance. By logic of the Louboutin case, would a claim for trademark rights filed in a jurisdiction with a more narrow interpretation of the law adhere to this decision? And if so, could that lead to a transnational approach to trademarks that pays heed to how quickly information travels in the digital age? While these questions are merely speculative, they do suggest a plausible change in the way trademarks are governed.

Terrine Friday is a Graduate Student Member of IP Osgoode and an LLM candidate at Osgoode Hall Law School, where she researches issues related to intellectual property and human rights.

The post Trademarks: Louboutin’s Sole Rights Affirmed appeared first on IPOsgoode.