HEAD OF MOOSE DESIGN

By Richard Stobbe

When is a moose just a moose?

Apparently when it is reclined in a parlour sipping gin.

In Moosehead Breweries Limited v Eau Claire Distillery Ltd., 2018 TMOB 24 (CanLII), Canadian brewer Moosehead Breweries, the oldest, privately owned, independent brewery in Canada complained about confusion based on its well-known moose marks for beer (including Registration number TMA667312, as shown above).

Moosehead alleged that the PARLOUR GIN DESIGN for gin (Application No. 1,667,113) owned by Alberta’s own Eau Claire Distillery Ltd., was confusing with Moosehead’s own moose marks for beer.  In Eau Claire’s mark, an anthropomorphic moose character and anthropomorphic bear character are seated in formal clothing amidst Victorian parlour furnishings, sipping gin and engaging in polite conversation. Does the use of the moose for gin make this mark confusing with Moosehead’s brand for beer?

Canadian courts tell us that the test for confusion is “a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks, and does not give pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.”

In this case, the decision-maker dismissed Moosehead’s opposition, after going through the factors, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.  There is no reasonable likelihood of confusion since the marks bear little resemblance in appearance, sound, and in the ideas suggested by them.

Moosehead’s challenge was rejected, and the Eau Claire mark will proceed.

Calgary – 07:00 MST

By Richard Stobbe

We just wrote about a dispute resolution clause that was enforceable in the Uber case. Last year, a privacy class action claim landed in the Supreme Curt of Canada (SCC) and I see that we haven’t had a chance to write this one up yet.

In our earlier post ( Facebook Follows Google to the SCC  ) we provided some of the background: The plaintiff Ms. Douez alleged that Facebook used the names and likenesses of Facebook customers for advertising through so-called “Sponsored Stories”.  The claim alleged that Facebook ran the “Sponsored Stories” program without the permission of customers, contrary to of s. 3(2) of the B.C. Privacy Act. The basic question was whether Facebook’s terms (which apply California law) should be enforced in Canada or whether they should give way to local B.C. law. The lower court accepted that, on its face, the Terms of Service were valid, clear and enforceable and the lower court went on to decide that Facebook’s Forum Selection Clause should be set aside in this case, and the claim should proceed in a B.C. court. Facebook appealed that decision: Douez v. Facebook, Inc., 2015 BCCA 279 (CanLII) (See this link to the Court of Appeal decision). The appeal court reversed and decided that the Forum Selection Clause should be enforced. Then the case went up to the SCC.

In Douez v. Facebook, Inc., [2017] 1 SCR 751, 2017 SCC 33 (CanLII), the SCC found that Facebook’s forum selection clause is unenforceable.

How did the court get to this decision?   Um…. hard to say, even for the SCC itself, since there was a 3-1-3 split in the 7 member court, with some judges agreeing on the result, but using different reasoning, making it tricky to find a clear line of legal reasoning to follow.  The court endorsed its own “strong cause” test from Z.I. Pompey Industrie v. ECU-Line N.V., 2003 SCC 27 (CanLII): When parties agree to a jurisdiction for the resolution of disputes, courts will give effect to that agreement, unless the claimant establishes strong cause for not doing so.  Here, the Court tells us that public policy considerations must be weighed when applying the “strong cause” test to forum selection clauses in the consumer context. The public policy factors appear to be as follows:

• Are we dealing with a consumer contract of adhesion between an individual consumer and a large corporation?
• Is there a “gross inequality of bargaining power” between the parties?
• Is there a statutory cause of action, implicating the quasi-constitutional privacy rights? These constitutional and quasi-constitutional rights play an essential role in a free and democratic society and embody key Canadian values, so this will influence the court’s analysis.
• The court will also assess “the interests of justice” and decide which court is better positioned to assess the purpose and intent of the legislation at issue (as in this case, where there was a statutory cause of action under the BC Privacy Act).
• Lastly, the court will assess the expense and inconvenience of requiring an individual consumer to litigate in a foreign jurisdiction (California, in this case), compared to the comparative expense and inconvenience to the big bad corporation (Facebook, in this case).

The court noted that, in order to become a user of Facebook, a consumer “must accept all the terms stipulated in the terms of use, including the forum selection clause. No bargaining, no choice, no adjustments.” But wait… Facebook is not a mandatory service, is it?  The fact that a consumer’s decision to use Facebook is entirely voluntary seems to be missing from the majority’s analysis.  A consumer must accept the terms, yes, but there is a clear choice: don’t become a user of Facebook.  That option does not appear to be a factor in the court’s analysis.

The take-home lesson is that forum selection clauses will have to be carefully handled in consumer contracts of adhesion.  It is possible that this decision will be limited to these unique circumstances.

Calgary – 07:00 MST

By Richard Stobbe

As noted in Part 1 and Part 2, IP rights in the fashion and apparel industry are fiercely contested. Fashion products can be protected in Canada using a number of different IP tools, including:

• confidential information
• patents
• industrial design or “design patent”
• trademarks
• trade dress
• copyright
• personality rights.

In the final part, we review the next couple of areas:

• Copyright

Copyright is a very flexible and wide-ranging tool to use in the fashion and apparel industry.  Under the Copyright Act, a business can use copyright to protect original expression in a range of products including artistic works, fabric designs, two and three-dimensional forms, and promotional materials, such as photographs, advertisements, audio and video content. For example, in Louis Vuitton Malletier S.A. et al. and Singga Enterprises (Canada) Inc., the Federal Court sent a strong message to counterfeiters. This was a case of infringement of copyright , arising from the sale of counterfeit copies of Louis Vuitton and Burberry handbags through online sales and operations in Vancouver, Calgary and Edmonton.  Louis Vuitton owns copyright in the following Multicolored Monogram Print pattern:

Since the Copyright Act provides for an award of both damages and profits from the sale of infringing goods, or statutory damages between $500 to $20,000 per infringed work, the copyright owner had a range of options available to enforce its IP rights.  In this case, the Federal Court awarded Louis Vuitton and Burberry a total of over $2.4 million in damages against the defendants, catching both the corporate and personal defendants in the award.

• Personality Rights

In Canada, the use of a famous person’s personality for commercial gain without authorization can lead to liability for “misappropriation of personality”. To establish a case of misappropriation of personality, three elements must be shown:

1. The exploitation of personality is for a commercial purpose.
2. The person in question is identifiable in the context; and
3. The use of personality suggests some endorsement or approval by the person in question.

Just ask William Shatner who objected on Twitter when his name and caricature were used to promote a condo development in Ontario, in a way that suggested that he endorsed the project.

Canadian personality rights benefit from some protection at the federal level through the Trademarks Act and the Competition Act, and are protected in some provinces.  B.C., Saskatchewan, Manitoba and Quebec have privacy statutes that restrict the unauthorized commercial use of personality, although the various provincial statutes approach the issue slightly differently. Specific advice is required in different jurisdictions, depending on the circumstances.

Calgary – 07:00 MST