The Directors Guild of America is trying to use a similar statute to prevent companies from selling macros that you can use on your computer to play back DVDs in certain ways (i.e., cut out swear words or Jar Jar Binks). DGA President Martha Coolidge claims, bizarrely, that those who sell these macros claim that they (or the results when applied to a DVD) are "the work of the original director." Huh?

Control, control, control. I wrote about it here.

I still think the "trade dress" problem is going to sink them. Although there is a reasonable rationale for using the logo to identify the company, that does not extend to the style of the web site. You've got a message to send? Fine. YOU send it - but don't coattail on someone else's rep, because they get tagged with your message. Clearly, I'm looking at the site differently, because my first reaction when comparing the two was "uh-oh".

I can find no evidence whatsoever that shareholders are involved directly in this. No mention on the website, no mention in the newspaper story. Attempts to follow-up via the domain registration show clearly fraudulent info in the domain registration.

As for Canadian Trade-Mark Law, I'd look to section...
---
7. No person shall

(d) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to

(i) the character, quality, quantity or composition,
---
Or more to the point -- "Air Canada" as a corporate entity neither created nor supports this petition. Therefore, you should not put Air Canada's trademarks and trade dress on the petition.

The lack of clear identification as to the source of the petition is a real problem; if the creator was clearly shown, it would be easier to argue that the site was NOT created by Air Canada. But the creator goes to some lengths, it seems, to disguide their identity. All Air Canada needs is a couple of emails from people saying "why are you pushing for your own president's ouster", and they've made their case. This would be especially damning if that was how the site came to Air Canada's attention. Even the messages section is headlined "Messages to staff of Air Canada!", leaving an easy inferrence that these are messages that will be delivered internally.

Also, a note if you try looking into those messages ("List Msg"): some of the messages refer to others by number, and it is completely confusing until you consider that some messages are missing - either dropped somewhere, or they had to be deleted because of language, but everything likely got renumbered.

All of this discussion of Canadian Trade-Mark law may be irrelevant of course, since the letter was sent from a U.S. law firm, and refers to federal and state law. Since the web site is registered with a .com address, the first likely place to look for regulation would be the U.S.

Yep - lots of companies do this, and lots do it for the wrong reasons just because they can. That doesn't mean it's never right, though. I note that Air Canada is not asking the site to be taken down, or the petition-related content to be changed, or the messages to be changed. As noted previously, there is no request to "silence their critics". Careful reading of the excerpts suggests they wouldn't even object to the use of the logo and word mark. In their phrase, his use "far exceeds what you need to identify Air Canada and convey your message." So - identifying Air Canada is ok; copying their web site style at the same time is not.

I doubt this is either trademark infringement or trade dress infringement (the sites don't look all that really similar to me.)
As Cory points out, the bright line test for infringement is confusion. I see no confusion here - they are using Air Canada's mark to talk about Air Canada. It is not commercial use, or dilution, or parody, or political protest . . . it's used as a visual identifier of the company the site is about. As someone pointed out, the mark is being used on a site owned and run by AC shareholders.
I suppose an argument could be made that confusion arises if people somehow think this is a site operated internally or otherwise was created by the corporate offices, instead of interested shareholders. But someone would have to be pretty idiotic to think that - so I doubt the degree of possible confusion could pass the test on that argument.
I see nothing in the Canadian statute linked to. Of course, one would have to do some case research to see if there is any precedent. I doubt there is, I doubt AC would actually take this to court, and I highly doubt they would win if they did.
This is what every big corporation does. The trademark people often don't have a lot to do. During the down times, they send out threatening letters to impress the execs. If you look at the number of these types of letters sent out compared to the number of cases taken to court, I'd bet it's less than 1/2 of 1%.
*However, I am not expert in either US or Canadian Trademark law, but I have done some work in both areas (I used to work in the Law Department of a Canadian company in the US headquarters.)

Um ... people in this forum need to go visit both of the websites. Both http://www.miltongottago.com and http://www.aircanada.com - go on, I'll wait.

If all they did was use the logo to identify the company, they would likely be on firm ground. But the complaint also extends to the use of Air Canada's "trade dress". Or, in other words, they have made the petition web site look like the Air Canada site.

This is equivalent to having someone walk around asking you to sign the petition wearing what looks like an Air Canada uniform, resulting the reasonable inferrence that Air Canada itself somehow supports this petition.

Based on what I see, Air Canada is going to win this in the first five minutes in front of a judge.

These guys really need to get better legal advice - my guess is that if they want to be taken seriously, their website will have a different interface by end-of-business on Monday.

Cory, minor nitpick: 'Democratic discourse' in the last paragraph should really be 'public discourse'.

I suspect that the "Goodwill" is parallel to the US version, which relates to things like counterfeits -- i.e., selling shoddy Nike Vacation Condos in a way that leads people to beleive that the Nike corp is related to the condos, which leads them to think that Nike is a bad company. It's not about estopping criticism. But IANAL.

since these people are shareholders in the company, don't they have some right collectively to use the trademark?

Edited by author 07-13-2003 11:31 AM
what goodwill?! My AC stocks are already worth crap! :)

But seriously, if the Canadian Trademark rules are similar to the US, the courts will side with the trademark owner (AC) unless the miltongottago site creators can defend the use of the trademark logo on its site.

Edited by author 07-13-2003 11:22 AM
Canadian Trade-Mark Law
(For some reason we use a hyphen in Canada. And a lot of the Trade-Mark Act seems to be related to wine labelling.)

The pertinent sections seem to be 6, 7 and 22. I'm guessing Air Canada is making use of the nice and vague section 22:

22. (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.

If I'm not mistaken, Corey is himself Canadian, and probably unlikely to make a naive assumption that the law is identical in all things, although I do have a feeling that treaties such as NAFTA (and others) will have 'normalized' these sort of laws throughout the continent.

Trademark law was never intended to protect the public, it was always intended to protect corporations. By prohibiting fraudulently labeled products (to use cory's bad example) Cocacola Inc. is protected from frivolous lawsuits when someone finds a rat in the fake coke they purchased.
But this is all beside the point. Please tell me how Air Canada's request to remove their logo equals "silencing critics." Many websites like blueovalnews.com have fought this trademark battle and lost. But they have not been silenced, they are as active as ever. The sky is not falling, chicken little.

Nicely dissected, Cory.
I've added "train-wreck of an airline" to my oxymoron collection, and henceforth will use Evian only in my windshield washer.

kisrael: Your point about begs the question put me on to a good site.

Simple solution to the problem would be to use the Air Canada's logo with a big NOT glyph through it (the red circle with a diagonal line).

I've always wondered why many corporate legal departments feel they have to respond like this. The website's url would have never made the Globe & Mail if Air Canada's attorneys ignored the site "borrowing" of the official website.

Edited by author 07-13-2003 07:32 AM
While I agree that the trademark argument is "bullshit", I think the formal argument is that somehow, people will be misled into thinking that the company itself is petitioning to remove its own president, rather than an "independent" group of shareholders.

And of course, I have no idea what the standard is in Canadian law.

(and no offense, but until a year or so ago, I never realized how many people didn't realize "begs the question" means the opposite (well, not the opposite, more "presumes this question has already been asked) of "raises the question", not the same...)

I happen to agree with what you're saying, but are you positive that Canadian trademark law is the same as American trademark law Cory?