Author Archives: Techtonik Legal

No Infringement Through Rehashing Facts Taken from a Book Marketed as True Crime

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The Federal Court recently provided us with a note-worthy decision relating to copyrights, in Winkler c. Hendley (2021 FC 498). This judgment relates to infringement proceedings as to a recent book that was written in large part by taking facts from an other book written about 70 years ago and entitled The Black Donnellys.

The main issue dealt with in this case involved determining whether borrowing facts from another book may, under Canadian law, amount to infringement if, say, the resulting narrative is basically the same. Though we know the answer to the foregoing question is that YES, similarities may amount to infringement if the structure and organization of a 2nd work is sufficiently similar to the original (including the sequence of events, etc.), this only goes for works of fiction. Indeed, whenever dealing with works of fiction, courts will generally be somewhat more critical of attempts by third-parties to copy facts and sequences of events, potentially finding infringement even when there has been no literal copy of text.

On the other hand, works which relate scientific or historical facts, for example, are treated somewhat differently by Canadian courts when assessing copyright infringement. Indeed, for these types of works, courts are generally opposed to allowing the original author from claiming exclusivity to the facts (included in his/her work), even if he/she may have been the first to publish about them. After all, human knowledge is built on reusing and discussing scientific or historical facts, for example -something Canadian courts have recognized over the years. In short, any author who pens something spelling out what may be described as scientific or historical facts should generally forget about any hope of claiming these very facts as his/her exclusive property; they basically become part of the common collective -essentially becoming part of the public domain.

The recent Winkler decision which we’re discussing in this post dealt with a work that was published years ago and thereafter promoted as part of the “True crime” genre, because it purported to tell the actual story of an specific Ontario family’s tribulations, at a certain time and place. Indeed, for 70 years during which the book at issue remained in print, its author and the publisher maintained it reflected actual events that really occurred during the XIXth Century, etc.

However, once the holder of the copyrights to the original book realized another author had seized upon the story of the Donnellys, litigation ensued in the context of which it soon became clear the book at issue may not have been as factual as one might think given how it has been marketed and promoted. Indeed, it turns out The Black Donnellys was not entirely factual; a large part of the events and “facts” described in the book having been invented by the author.

This lead the Federal Court in the decision at issue to refuse to entertain the notion that a 2nd author may have infringed the copyrights to the original book, under the circumstances of this case. Even though it was essentially a work of fiction, the court refused to consider the content of the original book as we would factual or historical works. Here, given how the original book was willingly presented and marketed, for so long, it simply did not make sense to allow the holder of the copyrights to suddenly claim that this book was really a work of fiction and, thus, deserving broader protection.

In effect, the Federal Court held here that the objective truth of what is contained in a book is not determinative, when it comes to ascertaining whether we should consider that specific work as being factual or fiction. It may suffice that the author held his/her work as being fact, to be able to rely on this, so as to be allowed to liberally borrow facts and narrative from such a work of authorship.

No, you can’t have your cake and eat it too.

Piece of Cake! Vachon Wins HOSTESS Infringement Lawsuit for Bread

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The Federal Court recently rendered a decision that seems worth discussing as a to a trademark infringement matter involving the (relatively) well known Québec bakery Vachon. The decision at issue, Boulangerie Vachon Inc. v. Racioppo (2021 FC 308) centers primarily on a matter of trademark confusion between a business known for its cakes, pies and the like, and a new comer on the Canadian market that elected to go with the HOSTESS trademark to sell bread, knowing Vachon owned the mark for other types of products.

The piece of litigation at issue started when the owner of the defendant corporations was given the impression that Vachon (and its predecessor in title), notwithstanding owning the HOSTESS trademark in Canada, wasn’t interested in bread products. Seeing this, the defendant started selling bread in Canada, which it did from 2016-2017 to 2019, only to realize too late that Vachon had in fact started to sell bread before his business did. See where this is headed?

Yup, you read this right: someone saw the mark and who it belonged to and decided that since Vachon didn’t (then) sell bread, it was fair game to do so through his own company. After all, there’s no link between bread and cakes right? Yeah, completely different things. I’m guessing this guy did not obtain advice from counsel (or an agent) before making his decision.

The case is a pretty good example of good infringement proceedings, in a case where the marks are essentially the same (notwithstanding different logos) and the goods are definitely in the same area, including by being sold in the same types of stores, generally in proximity on store shelves. Not too surprisingly, the judges ends-up siding with Vachon and agreeing that, under circumstances such as these, confusion is more than likely. Yeah, HOSTESS for bread vs. HOSTESS for cakes, cookies, muffins, etc. Who could have foreseen this coming?

One thing that seems worth mentioning as this judgment, is the court agreeing that not only was this a case of infringement but also one of goodwill depreciation, under Section 22 of the Trademarks Act. As you may know, though this is often tried by plaintiffs, it is not something Canadian courts have traditionally been too fond of granting. This time, however, the Federal Court judge agreed that use of the HOSTESS trademark on bread products from a source other than VACHON did not just infringe the rights of the mark owner but that it also depreciated the value and the distinctive character of the original mark. This is encouraging for mark owners in Canada.

That said, I should point out the end result is a little lackluster, as the Federal Court awards an injunction (of course) and… $10,000 in nominal damages. Given the fairly limited scope of the infringing activities (something like $70,000 in sales, and profits around $5,000), the court felt this was reasonable amount, under the circumstances.

Finally, one other point is somewhat unusual with this case, with the plaintiff attempting to obtain that the companies’ principal be personally held liable, something Canadian courts are often reluctant to do. Not too surprisingly, the judge held this case did not justify finding Mr. Racioppo personally liable. Though Vachon tried to argue the individual was clearly to blame for his recklessness (we knew of VACHON’s trademark full well), in the end the court elected to consider the principal’s behavior did not necessarily reach the level of culpable behavior that would justify holding him liable. For the court, one could look at this fact-pattern as a simple case of an ordinary course business decision that wasn’t entirely devoid of rational basis, if not for Mr. Racioppo’s mistaken belief that a competitor not making a specific type of product (i.e. bread) made it fair game for him and his business.

So, the lesson here, I guess, is that you shouldn’t assume that the listing of products and services in a registration are all there is to it. Sure, looking at the register is useful, but one should always remember that confusion takes much more than just the product listing into consideration.

Québec Looking to Curtail English (and Other Languages) Trademarks Through Revised French Charter

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The Québec government recently tabled a bill, called Bill 69, that seeks to amend several statutes, including the province’s Charter of the French Language, so as to better protect the French language. This bill seeks to consolidate existing rules, so as to reinforce the idea that French is the sole official language of the province of Québec, including in principle in how business is conducted.

Interestingly, as to I.P., the revised Charter would do away with an exception that legislators had inserted in the original statute, namely that trademark were generally exempted from complying with normal rules, including on store signs. Indeed, up to now, the Charter accepted that trademarks, whether registered or unregistered, were essentially outside the scope of what could be regulated by this provincial statute. As such, the OQLF could hardly enforce rules meant to force businesses to use and display French (e.g. on store signage, etc.), whenever trademarks were involved. This lead many businesses to adopt and use English-based trademarks, something that Québec courts eventually confirmed as totally acceptable under the existing Charter of the French Language.

This provides context to Bill 69’s introduction, as the Québec government is clearly now attempting to slam the door shut on that trademarks exception, to the fullest extent (legally) possible. To do, the revised version of the French Charter would essentially restrict what are considered trademarks for purposes of the exception explained above. If/when the bill goes through, the only trademarks that would remain considered protected from the obligation of being shown in French, are marks that have been duly registered, period. In effect, this would do away with trademarks displayed by businesses that did not bother or did not manage to register in Canada.

Québec cannot forbid non-French trademarks (because of the Canadian Constitution), but it can try and restrict what it will consider a trademark for the purposes of its language laws, which is exactly what this is about.

Setting aside the issue of whether legally a province may do something like this, businesses may want to start preparing for the proposed changes to the French Charter, by simply registering their marks, assuming they haven’t done so already. Though large companies will usually have done so, a lot of small and medium sized businesses do not bother registering their marks, preferring to fall back on common law rights. If those marks are in a language other than French, this may soon become a problem.

Fortunately for SMEs, registering a mark in Canada is relatively inexpensive, as compared to other jurisdictions. Businesses should however take note that typical delays are now around 3 years to register a mark in Canada. Given that the French Charter’s new provisions on trademarks will come into force 3 years after adoption of the bill, businesses the trademarks of which have not already been registered may want to get on it.

Mind you, Bill 69 has not yet been formally adopted but with a majority government in Québec at the moment, it seems to make little doubt that the bill will be adopted at some point.