The Canadian author, James Bow, faces a legal dispute over an image of the CN Tower that appears on the cover of his new book. The tower’s owner and manager, Canada Lands Company Ltd. (CLCL), claims that the image violates their trademark rights in the building itself.
James Bow, released his newest novel, The Night Girl, on September 10th, 2019. The story is about underemployed fantasy characters in Toronto, Canada. Given the story’s setting, Bow decided to include an image of the CN Tower on the book’s cover. The author did not expect CLCL’s allegation that his image violated the company’s trademark rights. CLCL holds many CN Tower-based trademarks, such as TMA251213 and TMA739615, which are registered for a variety of goods, including photographs and other types of pictures. The company claimed that they held trademark rights over the CN Tower building itself and any published image of the building required the company’s prior approval. They stated that the novel’s unauthorized image may mislead the public into believing that the book is commercially affiliated with the CN Tower. Consequently, CLCL requested that Bow not use the image in future press runs of his novel.
Bow was surprised by CLCL’s allegations. He had anticipated potential copyright claims and worked with his publisher to prevent such issues. This included sourcing the image from a stock photograph that was under a Creative Commons licence and having his publisher clear any rights issues with the artist that modified the image for the cover. Furthermore, s. 32.2(1) of the Copyright Act, protected him from infringement claims for photographs of public buildings. However, CLCL’s trademark claim over the building was completely unexpected, with Bow saying that “Nobody initially assumed that a building itself could be trademarked”.
Given the unusual situation, the author sought legal counsel to oppose CLCL’s trademark allegation. Bow’s lawyer argues that trademark law is meant to prevent marketplace confusion and it is highly unlikely that such confusion would occur in this situation. CLCL is not in the business of publishing fantasy novels that feature trolls and goblins working in the human world. Therefore, the public should not form a business connection between the author’s work and the company’s building.
Despite being a developing issue, the CN Tower dispute is already a learning opportunity for business owners, by reminding them to be aware of trademark law in their daily practice. This is especially relevant to Canadian business owners, who are dealing with the recent amendments to the Trademarks Act (TMA) that came into force on June 17, 2019. Among the amendments, Parliament’s addition of non-traditional marks may surprise the unaware business owner.
The recently reformed TMA expanded the definition of “trademark” to include non-traditional marks, such as sounds, colours, scent, tastes, etc. The possibility of registering new types of marks gives businesses greater flexibility when differentiating their goods and services from their competition. However, including non-traditional marks also adds complexity that may burden Canadian business owners. Business owners have built their company policies to address traditional trademarks and now must update these policies to capture non-traditional marks. Those who are not aware of the legislative changes or have not adequately updated their practice may be caught off guard by these changes and face infringement allegations from competitors.
Thus, the CN Tower dispute serves as a cautionary tale for Canadian business owners, suggesting that they revise their practices in light of the reformed TMA to not only improve their businesses, but to also mitigate potential risks.
Written by Imtiaz Karamat, JD Candidate 2020, enrolled in Professors D’Agostino and Vaver 2019/2020 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.