The Legal Implications of the “IRONMAN” Tattoo

IRONMAN is an iconic trademark in the world of triathlon. The term “Ironman” is used as both a describer of the ultra-endurance event and as a noun describing a person who completes the 3.86km swim, 180.25km bike, and 42.20km run.

To celebrate crossing the finish line, some athletes tattoo the recognizable Ironman “M-dot” design to their body. However, individuals with trademark-based tattoos may be vulnerable to infringement.  The World Triathlon Corporation (WTC) owns applications and registrations in Canada for the “M-Dot” trademark and, under Canadian law, copyright interests may subsist in design marks.

Trademark infringement

An action for infringement of a registered trademark can be brought under sections 19 and 20 of the Trade-marks Act.  To prove infringement, the trademark owner must establish that: (1) the defendant’s use of the trademark is within the section 4 definition of deemed use; and (2) such use must be use as a trademark.

Pursuant to section 4, a trademark is “used” in association with products when products are sold with the trademark displayed on the products themselves or on their packaging, or in association with the products in some other manner at the time the products exchange hands in the usual course of trade. A trademark is “used” in association with services when the trademark is displayed during the performance or in the advertising of the services.

If “use” is established, then the question is whether the defendant is using the trademark to distinguish its products or services from those of others. For many amateur athletes, bearing the “M-Dot” tattoo would fall short of satisfying the test for infringement.  Typically, such tattoos are merely ornamental and the individual is not selling products or providing services in connection with the tattoo.  However, professional athletes with the “M-Dot” tattoo might be more susceptible to infringement claims.  Arguably, displaying the “M-Dot” tattoo during the sale of products or provision of services may trigger infringement if the professional athlete’s tattoo serves to set apart their products or services from those of others.

Copyright Infringement

Copyright arises in many different forms, including logos such as the “M-Dot”. It is an infringement of copyright for any person to, without the consent of the copyright owner, produce or reproduce an original work or a substantial part thereof in any material form whatever.  Thus, a tattoo may be an infringement of the copyright in a logo. However, it is arguable that the impugned tattoo may evade infringing copyright for at least one of the following reasons: (i) inferred consent; and (ii) active authorization by the copyright owner.

WTC’s Intellectual Property Usage policy prohibits unlicensed use of trademarks and copyright owned by WTC.  However, WTC’s website posts numerous articles, entitled “Ink of the Week,” that describe the “M-Dot” tattoos of its participants.  These pages may incarnate a clash between WTC’s legal and marketing departments.  Nevertheless, they arguably provide tattooed athletes with an infringement defence.

Consent may be inferred from the acts (or omissions) of a copyright owner to operate as an infringement defence provided the inference of consent is clear and comes from the copyright owner. Further, a copyright owner who proactively (for example, through advertising or social media) encourages an infringer in a way that is likely to influence the infringer’s conduct or who expressly approves infringing conduct may actively authorize the infringer to produce or reproduce the copyrighted work.

Concluding Remarks

 In addition to traditional remedies, a court may grant equitable remedies if infringement is found. Such remedies could theoretically include precluding display of the tattoo or ordering removal.  Permission from the right holder is recommended before tattooing any design owned by a third party.

This article was published in BarTalk, Canadian Bar Association, December 1, 2017

 

 

 

SCC Grants Leave to Consider Scope of ISP’s Obligations Under the Notice-and-Notice Regime

In May of this year, the Federal Court of Appeal held that an Internet service provider (“ISP”) can charge a fee for “the actual, reasonable and necessary costs” associated with disclosing the identifying information of an alleged copyright infringer: Voltage Pictures, LLC v John Doe, 2017 FCA 97. Our article on this case can be found here.

Briefly, the Court held that a fee of $100 per hour (plus HST) for the delivery or electronic transmission of the identifying information of an alleged infringer was not “the actual, reasonable and necessary costs” incurred by Rogers Communications Inc. (“Rogers”). There was some evidence suggesting that Rogers’ cost of disclosure was “at most” $0.50 per IP address, although the Court found that there was insufficient evidence to make a determination on this issue.

Rogers sought leave to appeal the Federal Court of Appeal decision and the Supreme Court of Canada has recently granted leave to consider the scope of an ISP’s obligations under the Notice and Notice regime. A hearing has not been scheduled. We continue to watch as the next steps in this case unfold.

 

Indictment Filed Against Alleged HBO Hacker Behzad Mesri

An Indictment has been filed by the US Department of Justice against Behzad Mesri for allegedly obtaining confidential information from HBO including scripts and plot summaries for unaired episodes of Game of Thrones, and attempting to extort HBO. The specific counts in the indictment include computer fraud (unauthorized access to a protected computer and threatening to impair the confidentiality of information) and wire fraud. Read the indictment here, and read more about the story here.

Canada Influences IP Chapter in New TPP

Last week, during negotiations of the new Comprehensive and Progressive Agreement for the Trans-Pacific Partnership (CPTPP), the Canadian government played a key role in making significant changes to the intellectual property chapter of the proposed agreement.  Numerous provisions in this chapter have been suspended, including the proposed increase to the term of copyright.  Negotiations on the CPTPP are ongoing, so it remains to be seen whether these changes make it into the final version of the agreement.

Read more here.

How Global is the “Global Injunction” issued by the Supreme Court of Canada?

A US district court has granted a request by Google for a preliminary injunction preventing Equustek Solutions Inc. from enforcing the global injunction issued in a decision by the Supreme Court of Canada in June, 2017. The global injunction required Google to de-index all websites operated by a group, known as Datalink, from any Google search results worldwide. Datalink had been accused by Equustek of selling counterfeit Equustek products, but never defended the claim in court. Google argued before the US District Court for the Northern District of California that the Canadian order was “unenforceable in the United States because it directly conflicts with the First Amendment, disregards the Communication Decency Act’s immunity for interactive service providers, and violates principles of international comity.” See decision here.

 

 

 

 

Patentable.com Wins Silver at 2017 Davey Awards for Excellent Design

Whether they are visiting our office or our website, clients come to Oyen Wiggs for clear, effective guidance for protecting their innovations. Last year, we partnered with fSquared Marketing, a legal consultancy and design agency, to create a website that makes it easy for innovators to get the information, and counsel, they need. The new oyenwiggs.wpengine.com is getting plenty of attention, both from clients and from the design community. It won Gold at the 2017 Hermes Award and recently took home Silver at the 2017 Davey Awards.

The Davey Awards is judged and overseen by the Academy of Interactive and Visual Arts (AIVA), a 700+ member organization of leading professionals dedicated to embracing progress and the evolving nature of traditional and interactive media. To medal, oyenwiggs.wpengine.com had to impress a panel of judges and demonstrate exceptional form and function.

“Our firm’s strength is in helping creative innovators protect their valuable creations.  But when we ourselves needed a creative team to produce a website and brand that matches our firm’s distinction in IP law we went to fSquared Marketing.”— Bruce Green, partner.

 

Trouble Brewing in Trademark Dispute Between Moosehead and U.S. Brewery

Canadian-owned Moosehead Breweries filed a trademark infringement complaint in the District Court for the District of Vermont on Monday against Vermont-based brewery Hop’n Moose Brewing Company.  As the flood of new breweries and beers continues to flow across Canada and the U.S., trademark disputes are tapping media headlines.  Trademark owners must be diligent to ensure that their trademarks are used correctly.  If a trademark owner permits confusingly similar uses in the marketplace, it runs the very real risk that its trademark rights will be lost.

Recent Patent Appeal Board Decision Emphasizes Canada’s Strict Position on Double Patenting

Canadian law relating to double patenting is very strict compared with other countries. To obtain a second patent for the closely related subject matter, the claims must be patentably distinct.  In contrast, in most other countries, a difference in claim scope will generally support the grant of a second patent.  This distinction often catches patent applicants, particularly from other countries, off guard.  A recent decision of the Canadian Patent Appeal Board in respect of Canadian patent application No. 2444597 covering FAB I inhibitors (Commissioner’s Decision No. 1430) reflects Canada’s strict position.

The ‘597 application includes claims directed to a single compound. The Examiner alleged this compound was not patentably distinct from a group of compounds claimed in an earlier patent No. 2387016 owned by the same entity, and therefore rejected the ‘597 application on the basis of double patenting.  The Patent Appeal Board upheld that decision.

In this case, the applicant argued that the compound claimed in the ‘597 application, which fell within the genus of compounds claimed in the ‘016 patent, had improved antimicrobial properties as compared with the previously claimed compounds and therefore was a patentably distinct selection from the earlier genus. However, the Board determined that the claimed compounds of the ‘016 patent purported to be just as effective as those claimed in the ‘597 application, and that there was no special advantage of the claimed compound of the ‘597 application over the earlier compounds disclosed in the ‘597 specification.  The Board further determined, without acceding that such evidence was relevant given that disclosure of the special advantage required to support a selection patent must be in the specification, that post-filing data comparing the efficacy of the compound of the ‘597 application against only one of the compounds disclosed in the ‘016 patent with was not persuasive to establish increased efficacy.  The Board considered that the experimental post-filing data did not represent a fair comparison of efficacy since some variability in efficacy among the claimed genus of compounds was to be expected and one compound could not be taken to be representative of the genus.

This decision reiterates the importance of presenting all desired claims early in Canadian prosecution, to avoid the need to later file divisional applications having claims of differing scope that may be rejected on the basis of double patenting.

“If you keep calling these Velcro® shoes, our trademark will get killed”

Velcro Companies’ legal team has created a music video to educate the public on how and how not to use their company’s trademarks. It is important for trademark owners to ensure the proper use of their trademarks, since a trademark ceases to be entitled to legal protection where it becomes merely a generic name for those goods or services and is no longer capable of distinguishing the trademark owners’ goods or services from those of others.

Wellness At Your Desk: Strategies for Reducing Stress and Improving Productivity

 

The practice of law takes a heavy toll on the mind and body.  Devotion to our work often means late nights, prolonged sitting, and elevated levels of stress.  While most lawyers appreciate the importance of mental and physical health, the demands of the job rarely leave time to take care of ourselves the way we know we should.

One of the biggest barriers to realizing health goals is time – there just aren’t enough hours in the day to fit everything in. While time is static, energy is not.  By deepening our energy reserves, we can effectively make room for more productivity and less stress in each day.  The formula is simple.  To deepen our energy reserves, three elements must be nurtured:

  • physical activity (mobility and exercise);
  • diet; and
  • sleep

There are no short cuts. Fortunately, there are elegant and effective ways to practice each element without overburdening our already-overcomplicated lives.

Physical activity. Research shows that the positive effects of exercise can be obtained by elevating your heart rate for mere minutes per day.  Not only can this be done from your home or office, but simple sweat-inducing exercises can strengthen the muscles that suffer greatest in desk bound office workers – the posterior chain. For example, with proper technique, the kettle bell swing is a straightforward exercise that can be used to slay two birds with one stone  by targeting the muscles in the hips, glutes, hamstrings, lats, abs, shoulders, pecs, and grip all the while increasing heart rate.  However, if weights aren’t your thing, play is an effective way to reach exercise quotas and to relieve stress.

Unfortunately, exercise isn’t enough to offset the ill-effects of the prolonged sitting that most lawyers do. Mobility must be incorporated into our day.  Mobility has a positive impact on our stress levels.  Research has demonstrated that the body releases the stress hormone cortisol when seated in a hunched over position (e.g. at a desk or computer).   By correcting our posture throughout the day, we can reduce levels of cortisol and also enhance the release of the dominance hormone testosterone.  Since people only need to hold postures for a short period of time (i.e. 2 minutes) to observe a hormone change, periodically shifting positions and taking mobility breaks throughout the day can have a huge impact on stress and energy levels.  A mobility break can be as simple as getting up for a glass of water, retrieving a document from a printer down the hall, speaking with a colleague in person instead of over the phone.

Diet. Most diets work, provided they’re followed. For most people, this is the tough part.  When we’re tired, it’s easy to reach for sugary foods or caffeine to artificially inflate our energy reserves.  Knowing this, we can invoke a set of rules to target the weaknesses we’d like to change.  For example, a vegetarian sets the rule that they will not eat meat. With the rule in place, they are free to make other choices without deprivation.  Similarly, by setting rules for our moments of weakness, we can keep our diet on track and avoid missing the things we love.  Some rule examples include: “I eat vegetables with every meal”; “I don’t eat fast food (at lunch)”, “I only drink alcohol on weekends”.

Sleep. Sleep deprivation is the norm for many lawyers who struggle to turn off their over-active brain.  A lack of sleep leaves people irritable and affects their stress level.  But, with 7-8 hours of quality sleep, we can optimize our overall health and allow our brain to think clearly.  Of the three above-listed elements, sleep is often considered the most crucial to our health and must be zealously protected.  To prioritize sleep, consider establishing a sleep schedule and pre-sleep routine, which could include turning off screens 30-60 minutes before bed or setting devices to automatically eliminate sleep-destroying blue light at a specified time.  For people with an overactive brain, meditation can be a useful tool.

Conclusion. It’s not always possible to get a sound night’s rest, to have a clean diet, and to squeeze in a work-out.  And, that’s just fine.  We only set ourselves up for failure if we expect perfection.  By routinely practicing the three elements, we can build a foundation for improved health and reduced stress levels.  Since most people will overestimate what they can accomplish in a week or a month and underestimate what they can accomplish in a year, don’t be discouraged if changes don’t happen overnight.  You will be amazed by the results of your commitment to your health if you persevere.

The above is not intended as medical device. Sleep and anxiety troubles should be canvassed with your doctor.  Your doctor should also be consulted before engaging in a new exercise program.

 

Stephanie Melnychuk along with Madam Justice Michele Hollins will be speaking at the upcoming CBA West 2017 Conference in Las Vegas, Nevada from November 17 – 19, 2017.  Their presentation is called The Supple Lawyer: Tools for Reclaiming Health and Mobility from a Deskbound Occupation.

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