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.
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 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.
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