Ceci n’est pas une Cour suprême: Marks of the SCC

Those of you who read The Court on the web, rather than in email or by RSS, may notice that we’ve made a slight but important change to our header: gone is the little house in the Wellington Street meadow. In place of the line drawing of the Supreme Court building you’ll now see a line drawing of a pillar, emphasizing somewhat the “THE” of “THE COURT.” If you’re familiar with the SCC building, you will know that columns abound inside, and so this column stands for those; it also suggests, we feel, the academy from which we draw most of our contributors.

Why the change?

It turns out that the sketch we made from a photograph we made produces nevertheless an image trademarked by the Supreme Court, and so we were required to take ours down. Our original image is the one to the left. The Trade-Marks Journal, Vol. 44, p.163 (August 13, 1997) contains four images tradmarked by the SCC. Their version of the sketched courthouse scc_building_trademark.gifappears to the right. (The images in the Journal were not of highest quality, and although they have been scanned at high resolution, thanks to Sharon Wang, reference librarian at Osgoode’s Law Library, the resultant image doesn’t do the original justice, I’m sure.) The Supreme Court has trademarked three other images, presented here:

scc_trademark_02.png   scc_trademark_03.png   scc_trademark_01.png

It’s unclear from this whether any photograph or drawing of the building, recognizable as the Supreme Court, would be considered to fall under these trademarks. Rather than flirt with that possibility — one takedown message from the Supreme Court of Canada is… interesting; two would be unfortunate — The Court simply moved to a more neutral, shall we say subtle, icon. We hope it serves.

10 Responses

  1. Emir Mohammed says:

    This is certainly interesting.

    I think that two issues arise here:

    1) Sec. 9(1) of the Trade-marks Act states that “No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for… [an official mark]”. I think that The Court can argue that (a) it is neither a business nor (b) is its use of the mark likely lead to any confusion, association, etc. with the Supreme Court’s Office Mark (0908149).

    2) If The Court is an official initiative of Osgoode Hall, then why can it not apply for its OWN official mark for that image? It would be a very interesting exercise in the ‘adoption’ of two similar official marks. And, seeing as Parliament (in its wisdom and competence) has not permitted an opposition procedure (*per se*) for official marks, then it would likely be adopted.

    Thank you,

    Emir A. C. Mohammed, LLM, LLM

    PhD Candidate,
    Osgoode Hall Law School, Room 311
    York University,
    4700 Keele Street
    Toronto, Ontario M3J 1P3

    Email: EmirMohammed@osgoode.yorku.ca

  2. Yu-Sung Soh says:

    In the course of preparing for my blog post on the Mattel and Veuve Clicquot decisions, I did look a bit into the Supreme Court building issue. I found that official marks for public authorities registered under s.9 of the Trade-marks Act garner extraordinary protection not provided to trademarks under s.20.

    Unlike the test for confusion under s.6 for ordinary trademarks, the test for official marks only focuses on the extent to which the two marks resemble each other. There is no consideration of the fame of the mark, the difference in types of wares or services offered (what would be the service provided by the SCC: Justice?), or whether the use would likely lead to any actual confusion.

    By this standard, there is no question that our image quite strikingly resembles the Supreme Court’s own version. [In fact, looking at the two side by side reminds me of that children’s puzzle where there are a number of similar images and you have to find the two that are perfectly identical] This is not suprising, considering both versions are little more that a plain outline of the primary features of the courthouse.

    I do think there is an argument to be made that our image was not used “in connection with a business”. While I couldn’t find any cases on point, several decisions mentioned that the restriction only applies to commercial uses.

    As to the suggestion made by Emir of registering our own official mark, this would indeed be a very interesting spectacle. On the one hand, an official mark is a prohibited mark that no one else can register; and yet, the trademarks registar has no discretion to prohibit the registration of official marks by a public authority (of which a University is one). This would be the trademark equivalent of the unmoveable object versus the irresistible force.

    Given the broad powers provided to public authorities in registering and protecting official marks, these authorities should exercise care in the use of these powers in a responsible manner. Not only could they displace already existing trademarks, they may end up monopolizing images and words that should remain in the public domain. As Bob Tarantino notes in his post on this situation, the Supreme Court building is a national landmark, a part of our heritage. To register an image that is simply a plain depiction of such a building provides too broad a restriction on the public. Perhaps, the SCC could learn from the City of Toronto, whose own official mark includes a more stylized rendition of City Hall together with its name. Here, the public could find many different ways to draw City Hall (sans the name) without running afoul of the trademark laws.

    [I apologize for the long response. I had initially intended to include this in my Mattel post with the title, “Of Landmarks, Trademarks, and Landmark Trademark Decisions”, but found it disrupted the flow of my treatment of the SCC cases.]

  3. Between betting on the unmovable object [the SCC] and the irresistible force [York University], my money is on the Supreme Court.

    I think there might be an unwritten constitutional principle that states that TheCourt.ca can’t trademark anything that resembles the Supreme Court building.

  4. Emir Mohammed says:

    Aside from my earlier suggestions, perhaps another interesting avenue of challenge exists… namely, does the Supreme Court of Canada meet the “public authority” threshold.

    The Canadian Intellectual Property Office has issued a useful practice notice on public authorities and official marks – http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_notice/tmn2006-02-01-e.html (much of the jurisprudence in this area is also laid out therein).

    Now, both Registrar of Trade-marks v. Canadian Olympic Association, and Ontario Association of Architects v. Association of Architectural Technologists of Ontario tell us that in order for a body to be considered a public authority it ought to (a) pursue objects which benefit the public; and (b) be subject to a significant degree of government control.

    It is self-evident that the Supreme Court of Canada pursues objects which benefit the public (and we thank them for this). This warrants no further discussion.

    It is the other limb that is problematic… or at least *can* be problematic. For, if we accept that the Supreme Court of Canada is indeed a public authority capable of adopting official marks, then it would have be under a “significant degree of government control”.

    Now I realize that the present climate of judicial appointments, etc. seems to support this… but I am certain that a Court which claims or maintains [or *ought* to claim or maintain] that there is an independence of the Judiciary cannot at the same time say that it meets the criteria of being under a “signficant degree of government control”.

    It is also remarkable that the Supreme Court of Canada has stiffled “trade and commerce” (to use some american terminology) by adopting an official mark in something so utilitarian and “plain” [yes, this is a judgment call] as a black and white stylized image of the front of a courthouse.

    These opinions remains my own of course.

    Thank you,

    Emir A. C. Mohammed, LLM, LLM

    PhD Candidate,
    Osgoode Hall Law School, Room 311
    York University,
    4700 Keele Street
    Toronto, Ontario M3J 1P3

    Email: EmirMohammed@osgoode.yorku.ca

  1. January 31, 2007

    The supervisor of the Canadian law blog The Court is reporting the editors felt it was necessary to change their logo because the original image of the Supreme Court of Canada building they had been using in their header was covered by trademark. “It turns out that the sketch we made from a photograph we made produces nevertheless an image trademarked by the Supreme Court, and so we were required to take ours down (…) The Trade-Marks Journal, Vol. 44, p.163 (August 13, 1997) contains four

  2. January 29, 2007

    , a blog published by Osgoode Hall Law School which is the leading source for news, analysis and discussion of all things related to the Supreme Court of Canada. Check it out. In addition to its general awesomeness, I wanted to draw attention to a recent trade-mark issue that The Court encountered

  3. January 29, 2007

    […] Well, when the Supreme Court of your local country says it is, the answer is yes, I suppose.  One more reason to be glad we’re American’s I guess.  As the offending blogger, TheCourt.com, put it, “one takedown message from the Supreme Court of Canada is… interesting; two would be unfortunate.”  Yes, it would be — in more ways than two! […]

  4. February 2, 2007

    […] And I can’t resist linking to this post. […]

  5. February 8, 2007

    […] A website was told by the SCC that its drawing of the Supreme Court building infringed the SCC's own trademark.This is ridiculous. The SCC shouldn't be allowed to trademark a publicly-funded building/national landmark so that no one can even draw the thing! […]

  6. October 28, 2007

    […] Update, Ron Coleman had an earlier story on another strange Canadian trademark issue – apparently back in January, the Canadian Supreme Court asserted trademark rights against a blogger who posted a drawing of the Canadian Supreme Court building. (original story here). […]

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