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Welcome to the new podcast Fundamentals of Canadian Law, a podcast covering any and all aspects of the law in Canada. For our first episode, we’re joined by Morgan Jarvis, Director of the Queen’s Business Law Clinic and the designer of an upcoming course on intellectual property for the Queen’s Certificate in Law. Trademark and intellectual property the strange case of B Rich, and a great opportunity to look at trademark law and a unique way of delivering a Cease and Desist.
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00:08 Matt Shepherd: Welcome to Fundamentals of Canadian Law, a new podcast about the law in Canada that looks at aspects of Canadian law ranging from everything from trademark to property law, from family law to corporate governance. My name is Matt Shepherd, I'm a staff member at the faculty of law and one of many people working on the Queen certificate in law. A set of online undergraduate courses and the only online law certificate offered by a law school in Canada. For our first episode, we're joined by Morgan Jarvis. He's the director of the Queen's Business Law Clinic and the designer of an upcoming course in intellectual property for the Queen certificate in law. We're going to be looking at trademark and intellectual property through the lens of the case of B. Rich, a Canadian rapper who's given us an interesting way to look at trademark law and a very unique way of delivering a cease and desist order. This show is brought to you by the Queen's certificate in law. You could find out more about it @takelaw.ca. Let's talk to Morgan.
01:12 MS: Talking to Morgan Jarvis. He is the director of the Queen's Business Law Clinic. He is currently developing an IP course for the certificate in law and has substantial experience in IP law. And we're talking about 'out for a sip', which is a recent video by B. Rich. The back story is, B. Rich is a rapper from southeastern Ontario. A few years back in 2013, he recorded a track called Out For A Rip and did phenomenally well, something like 11,12 million views on YouTube, and actually went through the process of trademarking the phrase 'out for a rip' with his lawyer. And then recently, Coca Cola released a number of specialty bottles with sort of musical phrases on them, including in Canada, 'out for a rip'. And he essentially called them out with the help of his lawyer, who is actually a graduate of Queen's law, Queen's Law of Six. To our knowledge, it's the first cease and desist that's ever been issued as a rap video. And this just raises a bunch of interesting questions about IP and trademarks and in how all of this works. So, I guess, my first question, Morgan, is can you trademark just kind of a catch phrase or a thing you say?
02:26 Morgan Jarvis: Yeah, that's pretty much it. As long as consumers out there in the market associate that phrase, or that name, or the logo, the sound. There's a lot of different things you can trademark. If people associate that with you, with your source, like you're the source of whatever good services are sold in association with that design, logo, name, phrase, then yeah, then it's your trademark and you can actually gain those rights just by using it out there in the market by coming up with your own logo, your own name, and selling goods in association with it and then showing that people have come to recognize that logo as you. Or to be a bit more cautious and forward thinking you can go ahead like B. Rich did and register something that you think is... That you are, in fact, using in association with your brand and connected with your goods and services, you register it. And then that's presumed to be a valid trademark 'cause it's gone through a year long, two year long process in the trademarks office where examiners have looked at it and looked at what's already out there and they said, "Okay, yeah. With what you're claiming here? You can have that trademark."
03:46 MS: So this is something you can and he did. You can actually file this. It's in a office somewhere, officially stamped and things.
03:52 MJ: It is. You can look... So it's CIPO.gc.ca. That's the Canadian Intellectual Property Office. You can look up the trademarks database that and you type in 'out for a rip' and it's the only trademark and it's there. Just like they showed in the video. It's registered in association, particularly with the music video, his music industry, but also with beer, what's he got? Beer steins and drinking cups and coffee mugs and things like that. Hats and T-shirts. So anything... 'cause he does have to actually use an association with those things. So presumably he has sold T-shirts and branded material like that with that 'out for a rip' on it. And so, I guess, it's poured in an argument that what could be applied against him is that 'out for a rip' is a phrase that was already out there and Coke could say that, "Well, you know what? We weren't using it as your trademark. We weren't really using it in association with some of the goods and services like as a logo that you've registered. We're using it as the phrase was always used. We're not trying to rip you off."
05:00 MS: But they've also done it in the context of a series of bottles that have musical stuff on them.
05:06 MJ: That's exactly it. I think that little... In the music video it shows the Coke label and has the little, the online video play logo in there with it and that really, I think, is the kinda trigger point that connects it with the services that B. Rich really is associated with and helps him argue that you know you are intentionally ripping off our mark.
05:34 MS: So getting back to something you said a bit earlier, he's got this trademark for a whole bunch of different stuff. But he actually has to do that stuff.
05:41 MJ: Yes, that's, yeah, exactly right.
05:43 MS: So if he says shirts, he has to make shirts and so on and so forth.
05:46 MJ: Yeah. So then that's part of it. When you say that someone's infringing your trademark, so they're off using your logo in association with goods and services which are the same or similar to yours, such that consumers out there are confusing the source of those goods so they see... Like he's basically arguing that the pop beverage bottle with his trademark on it, makes people think that pop is connected with him not with Coke. And then Coke, then alleges will know your mark is invalid because you actually aren't used to get an association with Pop beverages or whatever you've claimed. And things goes back and forth, like that whether he claims infringement they claim in validity or that they aren't otherwise aren't ripping off his mark.
06:45 MS: So that's probably... And we don't know yet, but that's probably what Coke is going to say is, No, it's not valid because we're using it in a very specific way that your trademark doesn't actually cover.
06:56 MJ: Yeah, most likely there. They certainly are gonna have a team of lawyers. And that's why I love what he's done here where he's gone straight to the court of public opinion because he's now going to Coke. He's talking to a world where it's just, it's losses and profits, it's not right and wrong. So if he sends his letter to the legal counsel and it sits in their pile and they just look at it. Here's this little guy is this really gonna cost us anything or can we just let this go away. But he puts it out there and gets million views on YouTube all of a sudden. This is going straight to Coke's consumers and they can choose and say, "This is wrong", or "no, this is okay".
07:36 MS: Right.
07:37 MJ: Which I think is brilliant and...
07:39 MS: So it's a bit of a big guy...
07:40 MJ: Kudos to that lawyer and to B. Rich clever guys brilliant billion video.
07:45 MS: Because it sets up a bit of sort of a big guy, little guy there.
07:48 MJ: Exactly, yeah, yeah, very clever stuff. And then they still put them with like slightly more traditional but very unorthodox cease and desist letter at the end, which is also very clever and gets the point across in a more traditional legal way.
08:05 MS: Could you look at... And we don't have it in front of us right now, but could we look at the cease and desist letter at the end? I know it's phrased in a fun way, but it seems to contain a lot of language in it that makes it seem very official at the same time.
08:18 MJ: That's exactly right. He does manage to make it pretty clever and funny while still covering what needs to be said that by August 1st, we need to hear from you, otherwise you need to stop reproducing our mark on your goods and services because you are causing consumer confusion, you're infringing our trademark rights. So...
08:39 MS: And is that all Coke needs to do is just to stop?
08:43 MJ: That's kind of when you go and sue someone for trademark infringement then it becomes a question of damages. So, how do they really, really gain from using their trademark. It tends to get hard to prove and the logical first step is just an injunction and you'll file that in emotion before the main trial happens right away. You'll try and get injunction and that means where the court tells them to stop doing whatever they're doing to prevent further damage and then we'll deal with the issue of whether they've actually infringed the trademark and caused damages, later. But for now, we wanna get an injunction and stop you from doing that. So that's what he's asked for in that letter.
09:27 MS: So can there be a component of personal image in a trademark claim? If you would say B. Rich hates sugar and caffeine and just... I want in no way to be associated with the drink Coca-Cola 'cause it's got sugar and caffeine in it. Can he claim that it's damaged him somehow with them doing that?
09:47 MJ: I don't know if that would be so much be under the area of trademarks, but I'm not up on this area, but I've kind of been warning with this video. If they might also been claiming a misappropriation of personality like when you're into this area of celebrities and that kind of thing, and associating. Maybe they can successfully argue that they aren't really infringing his trademark but he may be able to successfully argue that that phrase is associated with me regardless of whether you think it's a valid trademark or not. And it's a misappropriation of my personality and associating me with that and saying that I'm endorsing Coke when I'm not. And again, I'm a non-expert in that area, so I don't know what the appropriate claims are but I think there may be something there as well, for sure.
10:40 MS: So what happens next in these sorts of claims?
10:46 MJ: Again, how he's put it out there, it's pretty clever 'cause it does demand a more rapid response because everybody knows this is an issue and it's gone straight to their pocket in terms of consumers and their choices. So I think it will probably get some kind of a response that's faster than you would normally see, 'cause if it's just a letter sitting on the General Counsel's desk, would probably not actually gonna get replied to in time. You often don't bother replying by the August 1st deadline, 'cause then the next step for the person claiming infringements to actually serve them with a statement of claim to go to court. And it's like they're gonna delay a little bit on doing that. And then the other, the statement of defense, their side of defense and it's this multi-year long process, so it would be much. It's much smarter this way where they're more likely to say, "You know what, we don't wanna deal with this, we don't want the negative impact on the Coca-Cola brand and all this kind of bad, bad attention is causing positive attention for B. Rich, negative attention for Coca-Cola.
11:54 MS: Right.
11:54 MJ: And we're gonna settle this and make either stop using it or give him some licensing money and come to a licensing arrangement as B. Rich's lawyer was saying they should've done it the first place in that video.
12:10 MS: So, just another thing I'm kind of curious with the video is he makes, B. Rich the rapper, has a list of fairly silly demands at the end. You know, he wants a new paint job for his track and sports tickets and skates and so on, and so forth. But then at the end of the video, really, the only legal kind of binding thing is you need to stop by August 1st. So, what he's rapping is kind of the things he'd like aren't really something that's being asked, it's just kind of fun.
12:39 MJ: Well, I mean, so, a settlement or a license to it is like any other contract where you agree to the consideration the value that you're giving in exchange for some right from someone else. So, in the case of IP patents trademarks, copyright, the owner, the author, the creative inventor has a monopoly right over that the subject matter that they've managed to successfully gain rights in and then they can license that to others, they can allow other people in either a very full or very restricted way, allow people to have use of those rights, which they have by statute in Canada and other countries. Hence then, so you do that in a licensing agreement and the consideration, the exchange for those rights. So, the right to reproduce his logo on their beverage bottles would be a truck load of coke on his front lawn, tickets to the Maple Leafs. And the other thing he was asking for there, he could. I think what he's kind of presenting there is a consideration for a license.
13:51 MS: Oh... So, we've just dict-ed the contract all the way too.
13:57 MJ: With IP it so connected, because of the way you monetize IP aside from using yourself is, is to license it to others absolutely.
14:07 MS: Fantastic. Is there anything else we haven't covered, kind of on the issue that you want to address?
14:14 MJ: No, just that the trade marks are a lot of fun and they become even more fun when people start rapping about them, especially guys as clever as these guys and Queen's grads, brilliant stuff.
14:34 MS: Thanks for listening to the first episode of Fundamentals in Canadian law and thanks to Morgan Jarvis for joining us, he's the director of our Business Law Clinic. Queen's Business Law Clinic in downtown Kingston, Ontario and also the developer of an upcoming course on intellectual property for the Queen's certificate in law. You could find out more about the certificate in law by visiting www.takelaw.ca this show is produced at Queen's University, which is situated on traditional Anishinaabe and Haudenosaunee Territory. For more information about the Queen's University faculty of law visit law.queensu.ca. Thanks for listening.