Olympic Legislation Compromises Free Speech and Procedural Fairness

In its October 25th, 2006 Annual Report, the Vancouver Organizing
Committee (VANOC) announced its intention to implement special legislation
to protect the Olympic brand and to prevent ambush marketing of its
sponsors for the period leading up to the 2010 Winter Olympics. As a
result, on June 22, 2007, Bill C-47, the Olympic and Paralympic Marks Act
was brought into force. The Act essentially prevents the promotion of
business through the use or adoption of any mark that may be mistaken for
an Olympic mark. In determining whether a person is in contravention of
the mark, the court may take into consideration the use of words,
expressions and symbols that have been listed in the schedules of the Act.
However, this list includes generic words such as “games, “winter” or
“gold”.

Prohibiting the uses of such generic terms in any capacity can be seen as
limiting freedom of expression, which is one of the fundamental freedoms
obtained in s.2(b) our Charter of Rights. Should a sporting goods store
that sells hockey and skiing equipment be prohibited from describing their
products as equipment for winter games? Clearly the intent of such a store
such would not be to capitalize on this limited opportunity or to ambush
the market. Rather, the store owners would simply wish to use these
generic terms to accurately describe their products. Incredibly, under
this Act, if this description is seen as implying an “association” with
the Olympics, VANOC could apply for an order seizing all goods using the
contravening mark, a remedy that is clearly unnecessary in most
circumstances.

While the Act does not apply to businesses using these marks prior to
1998, it is federal legislation that applies to all Canadian businesses
after 1998. Therefore, a Toronto business started in 1999 would be subject
to the same limitations as a Vancouver business started just prior to the
winter of 2010. The lack of distinction is clearly incompatible with the
stated purpose of preventing ambush marketing. The term “ambush” implies
something that is unexpected or sudden. I find it incomprehensible that
the drafters of the legislation in question contemplated a situation in
which businesses (many of them barely large enough to survive) were
started 10 or 11 years prior to the Vancouver 2010 Olympics for the
purpose of creating an unfounded association with the upcoming games.
Furthermore, in addition to being overreaching, the Act allows for VANOC
to sidestep the proverbial “red tape” and obtain an interim injunction
without even proving irreparable harm. This lack of concern over
procedural fairness compromises the integrity of our judicial system. Such
a power is excessive and unnecessary, especially in light of available
alternatives.

VANOC and the Canadian government could have achieved an appropriate level
of protection without sacrificing the fundamental freedoms of speech and
life/liberty. S.9(1)(n)(iii) of the federal Trademarks Act acknowledges
the need for special protection of “Official Marks” that are adopted by
public authorities. Under this provision, the government and VANOC would
be able to give notice of adopted “official marks” to prevent subsequent
uses of marks that are the same or could be mistaken for these official
marks. As well, under the Trademarks Act, people who used the marks prior
to the notice would have their rights “frozen in time” and would be able
to continue their use of the mark. Since public notice would have only
been given a few years prior to the Olympics, the Trademarks Act would
have only provided prevention from uses that were likely a result of the
upcoming event. Furthermore, the Trademarks Act acknowledges the necessity
of preventing the “trademarking” of generic terms (see s.12(1)(b) and
(c)). Such acknowledgement would provide more protection for the store
owner who sells equipment for winter games as seen in the example given
above.

However, despite the clear benefits of using the Trademarks Act, it can be
argued that the protections given to official marks are still too far
extending and not well thought out. Therefore, rather than succumbing to
the pressure brought forth by other countries implementing similar Olympic
legislation, the government should have reformed the Official Marks
portion of its current trademarks legislation. The reformed legislation
should provide sufficient protection and remedies against ambush marketing
without sacrificing fundamental freedoms and judicial/procedural fairness.

One Comment
  1. Arguably, a “faster, higher and stronger” protection of the Olympic marks is justifiable, given that the running tab for the 2010 Olympics is estimated at $2.5 billion. Bill C-47 codifies the existing case-law in this area and clarifies the eligibility for “public authority” status under s.9 of the Trade-marks Act. The main goal of trademark law is to protect trade identity from confusion that may result in loss of profit and control over the goodwill of the brand. The new legislation seeks to reinforce this traditional principle while addressing a modern challenge to IP protection.

    I agree that this legislation covers some of the most generic terms. But what really runs afoul of this legislation is a combination of these words and any indicia that might deceive the public to believe that the mark is associated with the Olympics. Hence, any business is free to use of these terms in any way as long as it does not falsely imply an association with the Olympic mark. Rather than limiting freedom of expression, the practical impact of this legislation is that it encourages commercial honesty.

    I do agree, however, that Bill C-47 lacks procedural fairness by allowing expedient interlocutory injunctions. We can only hope that VANOC will keep its promise to use its good judgment and not abuse its new power indiscriminately. And hopefully, the court will stand by the principle of proportionality to deliver judgments that are in proportion to the degree of alleged harm caused by the defendants.

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