Canada: When Parody Misses The Mark

Parody is not a defence to trademark infringement under the Trademarks Act.

The Superior Court of Quebec recently affirmed that parody does not excuse trademark infringement or depreciation of goodwill in a dispute involving an unauthorized "parody" of a newspaper. In MédiaQMI Inc. v. Murray-Hall, 2019 QCCS 1922, MédiaQMI Inc. (QMI), the owner of the well-known registered trademark Le Journal de Montréal, took action against the distributor of the electronic publication Le Journal de Mourréal. QMI claimed that the use of the mark Le Journal de Mourréal by the defendant caused confusion and depreciated the value of the goodwill of its mark Le Journal de Montréal, and sought a permanent injunction and profits derived from the unauthorized use of its trademark.

In the summer of 2013, QMI received several complaints about vulgar and crude content apparently published in its Le Journal de Montréal. However, QMI discovered that this content was in fact published by the defendant. The latter was publishing Le Journal de Mourréal, a satirical newspaper that contained fake "funny" news that mocked QMI's renowned publication Le Journal de Montréal. It also used a nearly identical layout, graphics and logo as QMI's newspaper. In fact, the only distinction between the two marks was the spelling of "Montréal" transformed into its slang version "Mourréal." The defendant published his newspaper online at <journaldemourreal.com>, and content was also available through a Facebook page with more than 150,000 Facebook subscribers.

The Court began its analysis by applying the elements for the finding of trademark infringement under section 20(1)(a) of the Trademarks Act, that is, the existence of a registered trademark; "use" of a confusing trademark by an allegedly infringing party; sale, distribution, or advertisement of any goods or services in association with that confusing trademark; and lack of entitlement or authorization. In doing so, the Court referred to United Airlines Inc. v. Cooperstock, 2017 FC 616, a decision that also dealt with a defence of parody in trademarks (read our article on this decision here), and came to the conclusion that QMI was the owner of the registered trademark Le Journal de Montréal, that it never authorized the defendant to use its trademark, and that the mark Le Journal de Mourréal was used as an indicator of origin of its publication.

Turning to the factors for the assessment of confusion between the two marks (inherent distinctiveness, length of use, nature of services and trade and resemblance between the marks (as in section 6(5) of the Trademarks Act)), the Court found that the resemblance between them was so striking that it alone would support a finding of confusion. The defendant objected to this finding, arguing that the humorous intent of Le Journal de Mourréal and the disclaimer on its Facebook page ("Warning this content is not intended for ordinary people who are rather in a hurry") negated the likelihood of confusion; however, the proof of complaints from readers who confused QMI's newspaper for that of the defendant's militated against this argument. Worse, journalist Anne-Marie Dussault, who was the subject of a fake news article published in Le Journal de Mourréal that claimed she was in a relationship with a Quebec minister then in office, testified for QMI on comments she received from different high-profile personalities who believed this fake news article to be true.

Thus, the Court rejected the defence based on the parodic nature of Le Journal de Mourréal, recalling that such a defence, despite being available under section 29 of the Copyright Act, does not exist under the Trademarks Act.

Although QMI based its action solely on the Trademarks Act, the Court undertook an analysis of the defence of fair dealing for the purpose of parody under section 29 of the Copyright Act. In CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 SCR 339 (CCH), the Supreme Court articulated a two-prong test to this defence: the first prong requires the dealing to be for one of the allowable purposes under the Copyright Act, and the second requires the dealing to be fair. In order to assess the fairness of a dealing, six factors were set out in CCH, namely the purpose of the dealing, the character of the dealing, the amount of the dealing, the nature of the work, available alternatives to the dealing and the effect of the dealing on the work.

In applying those six factors, the Court concluded that the defendant's use of QMI's copyrighted works was unfair. It considered the commercial purpose and widespread distribution of Le Journal de Mourréal to favour a finding of unfairness. Likewise, the similarities between both newspapers and the existence of alternatives that would not infringe QMI's copyright equally favoured such finding.

With respect to depreciation of goodwill (section 22 of the Trademarks Act), the Court sided with QMI's argument that the crudeness of some of the content published in Le Journal de Mourréal, combined with the finding of confusion between the two marks, negatively impacted the value of the mark Le Journal de Montréal. Of interest here is how QMI used the contextual and social backdrop of the case to its advantage: it emphasized that in an era where real news and fake news are increasingly difficult to differentiate, the use of a confusingly similar mark by the defendant threatened the journalistic credibility of Le Journal de Montréal.

The defendant also advanced that granting an injunction against him would amount to an unjustifiable limit to his freedom of expression. But while parody is protected by freedom of expression, such protection is not absolute. Given the likelihood of confusion between the two marks, an injunctive order was considered a justifiable limit and therefore the Charter-based argument was rejected.

The Court concluded by granting the injunction and ordering the defendant to hand over his profits to QMI as damages.

Since then, the defendant filed a notice of appeal. At the time of writing this article, his appellate brief was not yet due. However, for the time being, this case should serve as a cautionary tale of the dangers of walking the very thin line between parody and confusion in trademark law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions