Battle of Canadian B(r)ands: The Tragically Hip launches lawsuit against Mill Street Brewery for trademark infringement

On February 9, 2021, The Tragically Hip (“The Hip” or the “Band”), one of Canada’s most iconic rock bands, filed a lawsuit against Labatt [Breweries of Canada] subsidiary Mill Street Brewery (“Mill Street”) for copyright and trademark infringement. At issue is the brewery’s use of the name “100th Meridian” for a popular beer, first launched in April 2014, and their alleged association of the product with the hit single “At the Hundredth Meridian,” from The Hip’s best-selling 1992 album Fully Completely. The Band has a registered trademark in “The Tragically Hip™” protecting the rights to all goods and services including recordings, albums, merch, and promotional materials and claim an unregistered mark in the phrase “At the Hundredth Meridian.”

In their statement of claim, 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 popular album covers 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 100th 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 100th meridian. In their statement of claim, the Band argues that Mill Street’s beer is actually sourced from between the 97th and 95th meridians, which are hundreds of kilometers east from the 100th 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 existing partnership agreement 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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