Doing a PhD is a long and lonely endeavor. Family and friends brave enough to ask for updates are rewarded with responses ranging from the tired, “I sat. I read. I wrote.” to the lifeless, “I sat. And sat. And sat.”
Some students break up the monotony by watching cat videos; I read cat decisions by Judge Richard Posner. Other students forward jokes of the day; I forward quips by Professor David Vaver. Since most intellectual property students focus on copyright or patents, I will share my favourite ten “Vaverisms” on trademarks:
1. Are trademarks intellectual property? Yes. “Trademarks are commonly classified as intellectual property, but there is nothing intellectual about them at all.”[1]
2. What kind of intellectual property? An anomaly. “[T]he Supreme Court of Canada called trademarks, rather unkindly, ‘somewhat of an anomaly in intellectual property law’: unlike patents or copyright, they provide the public with nothing new or expressive, they are just ‘a kind of shortcut to get consumers where they want to go.’ Shortcuts are nonetheless valuable: ask any toll-bridge owner.”[2]
3. Do trademarks protect against unfair competition? No. “[T]he Trademarks Act’s predecessor [was] grandly – if misleadingly – called the Unfair Competition Act.”[3]
4. So, what do they do? Sound good. Sell goods. “Not only does it provide the often visual equivalent of a sound-bite but it actually sells goods.”[4]
5. Does that include protecting personality? Yes. “But there are limits. Celebrities cannot stop children or pets from being named after them, or adults from changing names to the celebrity’s. Elvis Presley eponyms keep his name alive in Canada and elsewhere. Sometimes ingloriously: see the one who, having changed his name to Elvis Presley, sued doubting Thomases, unsuccessfully, for defamation and was ultimately declared a vexatious litigant.[5] Another in Britain became a violent offender.[6]”[7]
6. Does that include the commercial appropriation of personality? Yes. “Tell lies about them and they will sue for defamation. Tell truths about them and they will sue for breach of confidence or privacy. … Death brings no respite: fame survives the grave.”[8]
7. Can trademarks be registered? Yes. “Before applying to register a trademark, one must first devise one. There are plenty of pitfalls.”[9]
8. How can they be registered? Many ways. “The same entity may therefore, for no logical reason, protect identical symbols thrice over – as a certification mark, an official mark, and a geographical indication of origin – sometimes with a registered trademark to cover remaining features. Just to compound this confusing untidiness, registered or unregistered certification marks that have not become generic are also protectable by passing-off.”[10]
9. Can sounds be registered? If they qualify. “Nor is the sound of a rooster crowing registrable: how can that be represented graphically and clearly? ‘Cock crowing’ will not do as a description because cocks crow differently. Nor is ‘cock-a-doodle-doo’ any better, this onomatopoeia is English, differs from French and other languages, and fools no hen.”[11]
10. So, what usually happens after “getting” trademark rights? Cha-ching! “The rights can, subject to the occasional minor irritation from competition or other general laws, be bought and sold in combination, donated, or used to secure finance. They may usually be split up horizontally and vertically – by territory, time, market, and so on – and dealt with accordingly. The maximum extraction of rents is thus assured.”[12]
11. Bonus Question: Is the above a good thing? Depends on who you ask. “The so-called tragedy of the commons, where a resource is depleted by overuse, can dissolve into a tragedy of the anti-commons, where too many blocking rights lead to under-use.”[13]
It is no wonder that Professor Vaver has as many enthusiastic students [14] as Taylor Swift has die-hard fans. Nor any wonder that “judges cite him so often. Mr. Justice Roger Hughes has even found out how often: 9 times in the Supreme Court, seven in the Federal Court of Appeal, seven in the Federal Court and 24 in the Provincial Courts (appellate and first instance). And that is only Canada. And only in IP.”[15] And that was all pre-2010. Students and Judges alike will cheer when the Right Honourable David Johnston, Governor General of Canada invests Prof. Vaver into the Order of Canada during a special ceremony at Rideau Hall on May 12th, 2017.
To read more about Prof. David Vaver's “...leadership in intellectual property law as a scholar and mentor”, click here.
U. Shen Goh is a Ph.D. Candidate working under the supervision of Professor David Vaver at Osgoode Hall Law School. Her research focuses on whether Canadian law is adequately protecting foreign language marks.
[1] David Vaver, Intellectual Property Law: Copyright, Patents, Trademarks, 2nd ed (Toronto: Irwin Law, 2011) at 423 [Vaver].
[2] Ibid at 424.
[3] Ibid at 427.
[4] Ibid at 429.
[5] Presley v Canada (Royal Canadian Mounted Police), [1998] YJ No 139 (SC), later proceedings [2003] YC No 24 (SC).
[6] R v Elvis Aaron Presley (1985), 7 Cr App R (S) 267 (CA).
[7] Vaver, supra note 1 at 437.
[8] Ibid at 439.
[9] Ibid at 444.
[10] Ibid at 458.
[11] Ibid at 461.
[12] Ibid at 558.
[13] Ibid at 559.
[14] Student reviews on www.lawstudents.ca range from the gushy “Vaver is a legend when it comes to IP, I would have LOVED to take a course with him!” to the Swifty “Vaver teaches there and I would probably die to take a class with him.”
[15] Robin Jacob, “Foreword” in Catherine Ng, Lionel Bently & Giuseppina D’Agostino, eds, The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (United Kingdom: Hart Publishing Ltd, 2010) at vi.