New York artist Maya Hayuk was approached by an advertising agency working for Starbucks, to see if she would assist them with a proposed advertising campaign. Ms. Hayuk is known internationally for her paintings using bold colors, and vibrant geometric shapes – rays, lines, stripes and circles.

She declined the offer to work with Starbucks (too busy) and was surprised when she saw the final marketing campaign for the Starbucks Frappuccino product. The marketing materials, including artwork on Frappuccino cups, websites, and on signage at Starbucks’ retail locations and promotional videos, were strikingly similar to Hayuk’s artworks. The artist promptly launched a copyright infringement lawsuit against both Starbucks and its advertising agency, claiming that Starbucks created artwork that was substantially similar to her paintings and further, the Starbucks material appropriated the “total concept and feel” of her paintings, even though there was no “carbon copy” of any particular painting.

Last week, A US District Court handed down its decision in Hayuk v. Starbucks Corp and 71andSunny Partners LLC (PDF) (Case No. 15cv4887-LTS SDNY). It is well settled that copyright does not protect an artist’s style or elements of her ideas. The court denied the claim that any copyright infringement occurred. In analyzing the two images, the court notes that the proper analysis is not to dissect, crop or rotate particular elements or pieces of the two works and lay the isolated parts side-by-side, but rather to look at substantial similarity of the works as a whole. The court concluded that “Although the two sets of works can be said to share the use of overlapping colored rays in a general sense, such elements fall into the unprotectible category of ‘raw materials’ or ideas in the public domain.” [Emphasis added] Thus, there could be no finding of substantial similarity and the claims were dismissed.

Calgary – 07:00 MT

By Richard Stobbe

The Google and Equustek Saga has garnered attention across Canada and even among US commentators (something rare for Canadian decisions). In September, 2015, Google Inc. filed an application for leave to appeal the decision to the Supreme Court of Canada (SCC), and as of January, 2016, the leave application materials have been submitted to the court. With luck, the SCC will take up the case, and we’ll see a decision in late 2016.

If the case does proceed, you can expect the intervenors to line up for a place at the table.

The Electronic Frontier Foundation (EFF), for example, unsuccessfully argued against the “dangerous ruling” at the BC Court of Appeal level, and they can be expected to advance their arguments at the SCC. Their position is that “a worldwide injunction would set a dangerous precedent that could later be used to limit the legal and equitable rights of others to receive speech.” The EFF raised US free speech arguments – okay, so the US Constitution may not be persuasive at the Canadian court, but worth a try. They maintain that “No single country should have veto power over Internet speech.”

Further reading: Is Google “Feeling Lucky” at the Supreme Court?

Stay tuned for more updates – this is one to watch.

Calgary – 07:00 MT

.
By Richard Stobbe

This is a case that became something of a lightning rod in the storm of subscriber privacy rights vs. copyright. As we wrote in our earlier post, a copyright owner can only enforce its rights against online infringement if it knows the identity of the infringer. It can seek a court order (called a Norwich order) to disclose the identity of those alleged infringers. Canadian law is clear that “A court order is required in every case as a condition precedent to the release of subscriber information.”

Such an order was used by Voltage Pictures to obtain the names and addresses of some 2,000 subscribers of an ISP known TekSavvy Solutions Inc. TekSavvy sought reimbursement of its costs for complying with the order: TekSavvy claimed recovery of a total of $346,480.68. Voltage offered to pay $884.00. The lower court concluded that Voltage should pay $21,557.50 to cover TekSavvy’s legal costs, administrative costs, and disbursements of abiding with the Order.

TekSavvy appealed that order.

In Voltage Pictures LLC v. John Doe, 2015 FC 1364 (CanLII), the court awarded TekSavvy an additional amount of $11,822.50. A win? Not really, considering how much they claimed, and what it would have cost to run the appeal.

The court also wagged a finger at TekSavvy. Since TekSavvy was only obliged to deliver the subscriber info after payment of its costs, the payment issue resulted in a significant delay in the supply of the subscriber names. The court complained that “…Voltage has not been able to obtain the information that it was lawfully entitled to for more than two years after Prothonotary Aalto’s Order. The failure to provide this information, on all accounts, appears to be due to TekSavvy’s unwarranted and excessive cost claims in the amount now of $350,000…”

It went on to note that “…the background circumstantial results do not sit well with the Court. They confirm that the policy in these types of motions should normally be to facilitate the plaintiff’s legitimate efforts to obtain the information from ISPs on the prima facie illegal activities of its subscribers. In my view, courts should be careful not to allow the ISP’s intervention to unduly interfere in the copyright holder’s efforts to pursue the subscribers, except where a good case is made out to do so. While it may be a practice to require prepayment of the ISP’s costs of the motion, the court must not let this issue delay unnecessarily the execution of the order to the extent possible. Reasonable security for costs may be preferable in some cases.” [Emphasis added]

As with the earlier decision, this case serves as guidance to copyright holders who are seeking the information of anonymous infringers, and to ISPs who must balance the privacy rights of subscribers.

Calgary – 07:00 MT

.
By Richard Stobbe

What if a competitor cut and paste the metatags from your website and used them on the competitor’s site? Is there a remedy under Canadian law? Are metatags subject to trademark protection? The answer is… it depends.

Red Label Vacations (redtag.ca) sued its rival 411 Travel Buys for use of metatags, including “Red Tag Vacations” in the 411 Travel Buys website. The Federal Court dismissed the trademark and copyright claims of Red Label Vacations (see: No copyright or trademark protection for metatags). Red Label Vacations appealed.

In Red Label Vacations Inc. v. 411 Travel Buys Limited, 2015 FCA 290, the Federal Court of Appeal dismissed the appeal, and upheld the lower court decision.

The court agreed that 411 Travel Buys had copied the metatags from Red Label’s site, but noted that none of the metatags appeared in the visible portion of the 411 Travel Buys website. Therefore, consumers did not see any of the metatags. In that sense, there was no “use” of the metatags as trademarks for the purposes of determining infringement.

Interestingly, there was one instance where the metatags were visible, and that was in the Google search result, where the words “Book Online with Red Tag Vacations & Pay Less Guaranteed” appeared in connection with the 411 Travel Buys site. The court considered that this would have the effect of sending consumers to Red Label’s site.

The court did leave the door ajar for other metatag trademark infringement cases, noting “in some situations, inserting a registered trade-mark (or a trade-mark that is confusing with a registered trade-mark) in a metatag may constitute advertising of services that would give rise to a claim for infringement…” [Emphasis added]

Calgary – 07:00 MT

.
By Richard Stobbe

As an update to our earlier post, we note that the Intellectual Property Institute of Canada, in its most recent bulletin, is estimating that the anticipated changes to Canada’s intellectual property laws – including the overhaul of trademark laws under new Trademarks Regulations, as well as changes to the Patent Rules and Industrial Design Regulations – will not begin until late 2016. This pushes the patent law changes into late 2017, with the trademark amendments to be implemented by early 2018.

The impact of the Trans-Pacific Partnership (TPP) on Canada’s IP laws is still being assessed. If ratified in Canada, the TPP is expected to require further consequential amendments to Canadian laws – such as copyright term extensions.

Stay tuned. Just don’t hold your breath.

Calgary – 07:00 MT