Just Laugh It Off: Trademark Parody and the Expansion of User Rights
August 9, 2017 by Sebastian Beck-WattI was invited to attend the Canadian Bar Association Intellectual Property section’s IP Day 2017 and Judges’ Dinner, on May 11, 2017 in Ottawa. It was an honour to be invited as the winner of the Intellectual Property Law student essay contest for my paper “Just Laugh It Off: Trademark Parody and the Expansion of User Rights”, a research paper I originally wrote as part of Osgoode’s Intellectual Property Law & Technology Intensive Program.
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 Intellectual Property Journal. 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 Théberge 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 Théberge 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] Théberge v Galerie d’Art du Petit Champlain inc, 2002 SCC 34, [2002] 2 SCR 336, at para 30 [Théberge].
[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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Interestingly, a recent Federal Court case dealt with a number of these issues. United Airlines Inc. v. Cooperstock, 2017 FC 61 covered parody in trademarks and in copyright. I would argue that this case highlights the need for the fair dealing/parody provisions I suggest in my paper, since the defendant lost on both issues in the case, despite obvious parody and no real commercial use.