In their , The Hip alleges that Mill Street attempted to capitalize on their “fame, goodwill, and reputation” by making the lager appear to be a business partnership with the Band in several posts across the brewery’s social media accounts, including featuring in promotional content. The claim also alleges that the brewery “deliberately amplified” their marketing of the beer during lead singer Gord Downie’s final tour with The Hip in 2016 following the announcement of his terminal cancer diagnosis. The band’s legal team argues that Mill Street “depreciated the valuable goodwill” of The Hip’s mark by enticing their fans to purchase Mill Street products, putting the brewery in direct competition with the Band.

The band seeks $500,000 in punitive, aggravated and explementary damages, and additional damages for trademark infringement. The band also seeks an order expunging all of Mill Street’s registered 100^th Meridian Marks (collectively referred to as the “Meridian Marks”) and a public statement declaring that the brewery has no affiliation with the Band.

The key issues at stake are the validity of Mill Street’s registered Meridian Marks and their alleged unauthorized use of copyrighted material. Pursuant to section 12(1)(b) of the Trademarks Act, a mark cannot be registered in a place of origin if it is “deceptively misdescriptive” by suggesting a product quality that is not in fact true, potentially limiting the use of a geographic landmark such as the 100^th meridian. In their statement of claim, the Band argues that Mill Street’s beer is actually sourced from between the 97^th and 95^th meridians, which are hundreds of kilometers east from the 100^th meridian, therefore using a place of origin mark in a misleading way. If the reviewing court is not convinced that the Meridian Marks violate s.12(1)(b), they may nevertheless find that The Hip’s existing trademark interests are sufficient to expunge Mill Street’s marks from the registry.

With regard to the copyright claim, the court will assess whether the use of the Band’s original work will be sufficient to substantiate infringement. Breach of copyright will be found where a party reproduces, publishes or communicates to the public an original work without licence or consent by the owners. The use by Mill Street of substantial portions of The Hip’s album artwork, particularly for commercial purposes, is likely to activate copyright interests. The proposed evidence suggesting that this alleged infringement contributed to loss of sales and business for the Band, especially in light of their with Stoney Ridge Winery, only strengthens this claim. Beyond copyright infringement, there may also be a violation of the Band’s moral rights if the unauthorized reproduction of their original works and the implied association with Mill Street are found to jeopardize either (i) the integrity of the work(s) or (ii) the honour or reputation of the Band. More evidence of disrepute and harm done will likely be required to show this linkage.

Written by Lauren Toccalino, JD Candidate 2022, enrolled in Professor D'Agostino's Directed Reading: IP Innovation Clinic course at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice. 

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The hundredth meridian is the longitudinal line that roughly separates the semi-arid, rural regions of Western Canada from the humid, more urban regions of the Central and Atlantic provinces. But for many, the term was first brought to life by the beloved Canadian rock band, The Tragically Hip. 

About the Lawsuit
On February 9, 2021, over the Toronto-based brewery’s “100th Meridian Amber Lager”. The band released its hit single “At the Hundredth Meridian” in 1992, which currently has nearly on its official music video alone. The Tragically Hip claims that Mill Street Brewery has engaged in a course of conduct to “ride on the coat tails of one of the most beloved bands in Canadian music history by marketing its beer with reference to The Tragically Hip and one of its many quintessentially Canadian chart-topping tracks”.

The Problem
A concern with Mill Street Brewery’s “100th Meridian” branded beer is the effect and implied association that the band’s fans may have with the product. In naming the beer after one of The Tragically Hip’s most popular tracks, fans may incorrectly assume a connection or association between the two. Indeed, a certain sense of injustice seems to come with the idea of Mill Street Brewery selling beers to consumers in a way that hints at a (non-existent) partnership. As such, The Tragically Hip is alleging that Mill Street Brewery has “directed public attention to its good [...] in such a way as to cause or be likely to cause confusion in Canada,” and has made “representations to the public that are false or misleading”. 

This claim is made in tandem with various passing off, trademark infringement, and copyright infringement allegations. Notably, The Tragically Hip has claimed that . In 2015, Gord Downie, The Tragically Hip’s late lead singer, was diagnosed with terminal brain cancer, spurring one last national tour across Canada the following year. On August 20, 2016, the day of the final show of the “Man Machine Poem” farewell tour, Mill Street Brewery published a photograph on its Instagram page of its 100th Meridian branded lager among four of The Tragically Hip’s album covers, which were clearly visible. The Statement of Claim outlines numerous such instances of Mill Street Brewery’s promotion of its “100th Meridian” branded beer that may lead consumers to infer a connection, collaboration, and association with the band.                               

According to the Statement of Claim, Mill Street Brewery’s purported justification for its “100th meridian” branded beer is that , and does not refer to The Tragically Hip’s song, reputation, and goodwill. After all, the hundredth meridian (in the geographical sense) existed long before The Tragically Hip popularized its name. However, there does seem to be a disconnect between Mill Street Brewery’s claims and the driving force that backs their marketing efforts. One may certainly argue that, at least in the minds of the public conscience, the “100th meridian” would not bear the meaning it does at all if not for its notoriety as part of The Tragically Hip’s hit single. 

Additionally, The Tragically Hip has claimed that if the use of “100th meridian” was indeed solely a reference to the place of origin, the in 2015 would be invalid and should be expunged, as they are either clearly descriptive or deceptively misdescriptive of the place of origin of the goods, given that the goods do not originate from solely west of 100°W. 

Paying Homage or Infringement? 
Mill Street Brewery may also try to contend that the marketing of the lager with reference to The Tragically Hip on social media was intended as an homage to the band’s legacy, and that the right to use of the band’s brand in doing so should be liberated. There is, however, a fine line when it comes to using intellectual property under the guise of “paying homage”. For instance, in 2015, , alleging that the song had copied numerous aspects of Gaye’s 1977 song “Got to Give It Up”. In that case, both Williams and Thicke testified to have drawn “inspiration” from works like that of Gaye’s. The final jury-verdict, however, suggests that creating music “reminiscent” of an era, or that pays homage to the musical greats of the past, . In the present case, The Tragically Hip may argue that they alone should be able to autonomously manage their own brand, image, and associations. 

What’s Next?
The Tragically Hip has requested an order compelling the defendant to remove all posts referencing the band, an order compelling the defendant to publicly deny any association between their product and The Tragically Hip, and various claims for damages, including $500,000 in punitive, aggravated, and exemplary damages. Clearly, taking this dispute to court will not be a painless maneuver for Mill Street Brewery, especially considering the amount of press the lawsuit has already received. Professor Pina D’Agostino, founder and director of IP Osgoode at Osgoode Hall Law School, shared with that she expects Mill Street Brewery will want to settle.

What might this lawsuit mean for breweries and bands in the future? If ruled or settled in its favour, The Tragically Hip would set a precedent with respect to the consequences that unassociated parties may face in branding their products in a way that benefits off of the reputation of another without permission. More broadly, this lawsuit should serve as a reminder to brand owners to thoroughly assess and develop products and marketing strategies that comply with others’ intellectual property rights, and if there is a grey area, to strategically assess whether consumers may misconstrue a branding tactic as something that it is not. With proper collaborations and partnerships in place, there is in creating mutually beneficial products. 

Written by Emily Xiang, Osgoode JD candidate and IPilogue Contributing Editor, and Alessia Monastero, Intellectual Property and Branding Lawyer and IPilogue Senior Editor.

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