Law Times

Law Times • January 27, 2014 Page 11 FOCUS Pop culture a prominent issue in trademark case BY CHARlOTTE SAnTRY Law Times H omer Simpson, rapper 50 Cent, and Mr. Big from Sex and the City make strange bedfellows, but all three arose in a trademark case won by a cigar maker. In Empresa Cubana Del Tabaco v. Tequila Cuervo S.A. Dec. V., the applicants used popular culture references to emphasize their Cohiba cigars' status as an iconic brand. The approach could reduce the cost of trademark cases by replacing expensive surveys with a much cheaper Internet trawl of movie scenes and song lyrics, lawyers believe. The case came about when Tequila Cuervo applied to register the trademark Lazaro Cohiba for its bottles of rum in 1996. Empresa Cubana Del Tabaco opposed the application due to confusion with its own registered Cohiba trademarks for tobacco products. On Sept. 30, 2008, the trademarks opposition board rejected Empresa Cubana Del Tabaco's grounds of opposition. The case went to appeal at the Federal Court in Ottawa on Oct. 4, 2013. The applicant submitted new evidence that included rap lyrics and clips from TV shows and movies. As a result, Justice Judith Snider allowed the appeal after finding Cohiba to be "an iconic brand of cigar, associated with wealth and status." "The fame of the brand extends beyond cigar smokers to the general population. The association of cigars and alcohol — specifically hard liquor — is notorious," she wrote. "As a result, I am satisfied that the first impression of a casual consumer seeing a bottle of rum with the label Lazara Cohiba would believe that the rum was related to Cohiba products. In other words, there is a likelihood of confusion." John Simpson, a trademark lawyer at Toronto boutique Shift Law, says popular culture often arises in such cases but notes "it's not usually what the court focuses on." By contrast, Snider based her conclusion largely on the fact that film, TV, music, and print magazines distributed in Canada and the United States had widely referenced Cohiba. For example, it featured in a pilot episode of Sex and the City in which the character Mr. Big smoked a Cohiba cigar; a 50 Cent music video; a scene in which Homer Simpson says "Cohiba me" while smoking a cigar; and the movie Hotel Rwanda. "Cohiba carries with it an iconography of social status, wealth, power or intrigue which is in the minds of not just purchasers, but in the general public," wrote Snider. Scott Miller, a partner at MBM Intellectual Property Law LLP who represented Empresa Cubana Del Tabaco, says the costs of carrying SCC ruling may change litigation landscape for copyright claims BY CHARlOTTE SAnTRY Law Times E xpert witnesses and nonpecuniary damages may feature more heavily in copyright claims following a major Supreme Court of Canada ruling centered around a children's TV show. In Cinar Corp. v. Robinson, the court found a 1995 children's program, Robinson Sucroe, to have infringed an idea developed by Quebec animator Claude Robinson in the mid1980s. Robinson spent several years working on The Adventures of Robinson Curiosity, a show inspired by his own life experiences and Daniel Defoe's novel Robinson Crusoe. Robinson drew detailed sketches and storyboards, wrote scripts and synopses, and designed promotional materials for his show. It failed to attract investors, however. A decade later he was stunned to watch Robinson Sucroe, a program developed by several parties who had seen his ideas that he perceived as a "blatant copy," according to the Dec. 23 decision. He commenced an action against Cinar Corp. and a group of its former directors and officers, distributors, and co-producers and received damages of $5.2 million. The Quebec Court of Appeal then reduced the award for psychological suffering to $121,350 from $400,000 and the punitive damages to $250,000 from $1 million. Robinson then took his case to the Supreme Court. It partly restored the original award when it granted him about $4 million. The court also dismissed appeals from Cinar Corp. and the named former employees who usual attention given to the particular consumers out this mass-media research were "minimal." Gathering this kind of evidence rather than car- of the goods in question, he adds. "In the context of an iconic or famous traderying out a survey to ascertain the public's knowledge of a brand could cost a client $5,000 instead of mark, the case says the court can and should consider the perspective of the general public, $50,000, he adds. "Now we don't need surveys anymore. We which would include not just the consumers can prove [a brand is] well known through of cigars and rum but everyone's perspecpop culture," he suggests. tive," he says. The decision builds on the 2011 SuThe decision also moves away from the preme Court of Canada trademark decision notion of reduced confusion when goods, such as alcohol and tobacco, are available in Masterpiece Inc. v. Alavida Lifestyles Inc. that said survey evidence should be through different channels of trade. "applied with caution." "There is a relationship in the mind Simpson says the latest developof a smoker between alcohol and toment is very positive for trademark bacco," wrote Snider. practitioners. "Usually, "In effect, there is a disposition we need survey evifor confusion. Thus, a smoker who dence. We go out to sees a bottle of hard liquor with a shopping malls and name that is the same as a brand of street corners and cigars or cigarettes that he smokes interview thouwould be more likely to associate the alcohol brand sands of people and with his cigarette find out how many brand." people recognize that Tequila Cuervo brand," he says. is appealing the deAs a result of the decision, Simpson cision. However, the immay now encourage pact will be significant if clients to push product References to pop culture helped a cigar company win a trademark it stands, according to Credit: VeeX/Shutterstock Simpson. placement in movies case against a rum producer. "This will be cited by and TV shows as far as every trademark owner who wants to make a case possible. The Federal Court's consideration of the general that their trademark is well known or famous," he LT public's brand awareness is a departure from the says. 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