Down The Trademark Rabbit Hole

Cover Image: Texture Under The Ice by Michelle Warren, Creative Commons Attribution 2.0 Generic

This is a blog post that was originally going to be much shorter, and part of a different post. But the more I read, the more I discovered that this story required more context, more nuance, and more space.


Investigating the trademark debacle surrounding Pride Toronto

Pride Toronto, after the outcry of gender and sexual minorities and organizations across Canada, released an announcement on the 21st of July when the public discovered that they were planning to trademark the terms trans* pride (where the asterisk can replace suffixes like -gender or -feminine) and dyke march.

To recap their blog post, the two trademark applications were made because the organization had discovered the intent of a Mysterious Individual who was trying to trademark the two names for their own purposes. Instead of publicly-shaming this person, Toronto Pride decided to quietly apply for the trademarks in order to protect the two terms.

As of this writing, it seems that Pride Toronto is going ahead with plans to withdraw their trademark applications, as they detail in their July 21 announcement:

Regardless of the original intention, we sincerely regret the misunderstanding and controversy that making this decision without engaging the broader dyke and trans* communities has created. In the weeks to come, we will work to engage partners and community leaders over the right way to ensure these events remain in the hands of the communities they serve. We will withdraw our applications to seek trademark protection.

Here are the links to the online Canadian Intellectual Property Office (CIPO), which still haven’t been taken down: the application for trans* pride and the application for dyke march.

Their claim of trademarking in order to defend LGBTQIA communities across Canada is complicated by further investigation into Pride Toronto’s past trademarking practices. This is not the first time that Pride Toronto has decided to trademark a common LGBTQ-related term, as documented by Vancouver Dykes March on July 18th:

Pride Toronto has a previous history of quietly trademarking generic terms and then using their trademark to generate revenue and eliminate independent competition. After they registered the “Pride” mark, we have been told they approached vendors – many of whom had been producing pride merchandise for years (some as long as Pride Toronto had been) and shutdown sales. To be clear, Pride Toronto could have simply sought trademark protection for a more specific mark, but chose not to.

Due to their previous behaviour, the lack of press releases or any communication with VDM on this matter, we are forced to conclude that their actions are a willful and overtly hostile attempt to demand licensing fees and impose conditions on Dyke Marches and other LGBTQIA organizations around the continent in exchange for the “privilege” of selling merchandise with these words on them.

Confirmation that Pride Toronto has trademarked the word “Pride” can be found here on the CIPO website. Toronto Pride’s habit of trademarking terms, especially for the purposes of merchandising, should be of concern to the LGBTQIA community. It is written explicitly on CIPO’s website that Pride Toronto is using the “Pride” trademark for the purpose of selling merchandise such as: “briefs, G-strings, bikinis, shorts, boxer shorts, clothing golf shirts, sweat shirts, tank tops, v-neck sweaters, baseball cap, sport bag, water bottle, poster”.

Pride Toronto is using trademark law for merchandising, but now there is also their claim that these later two applications were done to protect the community. Reading through CIPO’s rules and regulations for registering trademarks, there are legal procedures that exist to oppose in-progress trademark applications:

Any person with valid grounds for doing so may oppose a trademark application advertised in the Trademarks Journal. An opposition must be made within two months of the publication date by either filing a statement of opposition or requesting an extension of time to oppose. The prescribed fee must accompany the statement of opposition or request for extension. The Office of the Registrar of Trademarks will dismiss any opposition that it considers to be frivolous.

If your application is opposed and you do not already have an agent, you are urged to hire one at this point. The same holds true if you wish to oppose someone else’s application.Opposition is a complex and often lengthy process[emphasis mine]. Opposition proceedings are adversarial in nature and similar to court proceedings. Both parties may file evidence and counter-arguments, cross-examine the evidence of the other party, and make representations at an oral hearing. After a final decision is rendered, it may be appealed to the Federal Court of Canada.

There could have been a coordinated, public campaign appealing CIPO to refuse the trademark application, if what Pride Toronto says is true. While the anticipated legal battles that ensued would have been lengthy and expensive, it could have been par for the course for an organization that organizes one of the largest LGBT-related pride events in Canada. In acting quietly and moving to trademark the terms first, Pride Toronto unfortunately put themselves in a situation where they look like the villain.

Since July 21st, there has been no more word from Pride Toronto. CIPO still has the applications for trans* pride and dyke march listed on their website as linked above. Regardless if Pride Toronto is telling the truth, I am concerned about the ethical implications of defensive trademarking.

Defensive trademarking is apparently a practice that started so that one could be protected from “Trademark Trolls”. As reported by Vancouver Dykes March on the 21st of July follow-up of their Facebook statement in this document:

Despite our view that these terms should not be trademarked, “Trademark Trolls” have been on the rise in other jurisdictions in the Commonwealth (notably in the UK), and perhaps it is time to look at other options, such as having an organization that holds these marks defensively for community organizations, while being transparent, accountable, politically acceptable / politically neutral and bound by its own constitution / bylaws in what it can and cannot do.

The Mysterious Individual in Pride Toronto’s argument is one of these trademark trolls. I worry that somehow our legal system has made community organizations feel like their only recourse to avoid expensive legal battles is to trademark terms that should not be trademarked.

Wikipédia defines a trademark troll as someone who sits on trademarks in order to sue communities. If the only recourse to protect marginalized communities from trademark trolls is to rush to trademark terms first, it makes me question if governmental bodies such as CIPO are even equipped to deal with groups who want to use copyright law in order to commit hate crimes against communities. As Sarah Jeong, a legal expert on technology-enabled harassment and spam, writes in her latest book The Internet of Garbage, there are real structural problems in the legal and technological frameworks we currently use to deal with harassment, trolling, and spam. In the chapters “The Intersection of Copyright and Harassment” and “Turning Hate Crimes into Copyright Crimes”, Jeong breaks down the Garcia vs. Google case from December 15, 2014, a case which highlights how copyright law and harassment on the internet can become intertwined.

[…] mostly lawyers deeply familiar with copyright who had followed the case with great interest—were confused by it. Wasn’t Garcia a case about copyright law and preliminary injunctions? For Cindy Lee Garcia, of course it wasn’t. It was a case about her right to control her exposure on the Internet. But in her quest to end the barrage of hate aimed at her, she ended up in a messy collision with copyright doctrine, the Digital Millennium Copyright Act (DMCA), the Communications Decency Act (CDA), and the First Amendment. (Sarah Jeong. “The Internet Of Garbage.”)

The Garcia case was notable for many reasons, but one reason was because it showed that when you try to appeal to copyright law to exert justice on your behalf as a victim of hate, the legal system will fail you. Laws that are meant to control intellectual property and the property of corporations are not equipped to deal with hate crimes. There are notable differences in copyright and trademarking procedures between Canada and the United States, but they seem to exist to give individuals and corporations the ability to control their property.

If Pride Toronto is being disingenuous, it worries me immensely that concepts such as “Pride” (as in “gay pride”) can belong to an organization that wants to secure merchandising licenses. Regardless, it seems like defensive trademarking is a common practice utilised to mitigate harm enabled by those exploiting the structures of copyright law. In the case of trademark trolls sitting on terms that belong to marginalized communities, it seems that CIPO is at risk of becoming a vector through which hate is dispensed.

Update 6:47PM

DailyXTra has released a longer investigative piece today on this matter: Who owns the Dyke March and Trans* Pride? Aaron Glynwilliams, one of the two co-chairs of Pride Toronto’s board, blames most of this scandal on “vicious” community in-fighting and on other internal issues unrelated to the trademark applications.

Further reading:

 

By Gersande

Where are the women at Fantasia?

It’s that time of the year, Fantasia Film Festival is cluttering my Google calendar once again. Every year Fantasia curates a quirky selection of gore, Asian and indie films to show alternatives to the movies available in your local cineplex. Beside some indie and short films, most of the movies screened at Fantasia are actually not recent releases in their country of origin, and you can find them on DVD. However Fantasia’s growing success shows that watching films on the silver screen still holds some kind of magic over your good old TV.

“This is a love story of me and my TV.” The movie, Haruko’s Paranormal Laboratory starts with this flashy statement. If you think it’s just another one of those half-true one-liners you are mistaken. That’s exactly what the film is about.
Spoiler!

Haruko’s Paranormal Laboratory is one of those wacky, surreal, light hearted comedies we see a lot at Fantasia, but it stands out for a particular reason. It is one of the 3 feature films entirely directed by a woman at this year’s Fantasia. Haruko is director Lisa Takeba’s second feature film. It is a topical and whimsical story of a girl who watches TV a bit too much. Haruko has been the odd one out since she was a kid, but still happens to be the least weird character in the film. One day her TV comes alive in the shape of a young man, they make love and everything seems just fine. The rest of the movie is a wondrous and surreal list of events that doesn’t really lead anywhere, beside being weirdly entertaining.Haruko’s Paranormal Laboratory is the ginger next to your sushi. Even though you are there for the sushi, it’s worth eating it, because it is different, intense and cleanses your palette.

Lisa Takeba is a Japanese filmmaker and writer, whose portfolio includes several shorts, two feature films, cell-phone novels and even a Nintendo DS game: Handsome X English In love with England. She is one of the 7 women of Fantasia’s 144 feature film directors. There are only four movies directed by women and another three feature length movies where a woman is credited as a co-director. These numbers are heartbreaking: 4.8% if I count all seven films and 2.7% if I count the two strictly women-directed movies. That is not even up to the devastating 7% industry ‘norm.’ According to San Diego State University’s Center for the Study of Women in Television and Film “in 2014, women accounted for 7% of directors, up 1 percentage point from 2013 but down 2 percentage points from 9% in 1998.”

Unfortunately Fantasia’s lack of women directors is not a surprising phenomenon. Most festivals are doing just as sadly on this front. Last year, the prestigious Cannes Film Festival was finally called out on its lack of featuring and awarding women filmmakers. Only one woman has ever been given the festival’s highest prize, the Palme d’Or in the festival’s almost 100 year-long history.

Why there are so few women at these festivals is a complex question and points at a systemic problem within the industry at large. Of course Fantasia cannot fix that on its own, but not making an effort to be inclusive in 2015 is not easy to forgive. Fantasia has grown to be one of the biggest and most loved genre film festivals in the world and as such it is a role model. Fantasia’s whole mandate grew out of being different, its fans are some of the most dedicated and open minded people, who know what it is to go against the stream. Let’s hope next year not just Fantasia’s films but its directors will be diverse as well. Till then, you have your TV. Go make love to it.

And as far as I am concerned, Fantasia gets the
David Hasselhoff approval this year:
CONGRATS YOU HAVE AN ALL MALE PANEL!

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Haruko’s Paranormal Laboratory plays on Saturday at 3:15 PM at the J.A. De Seve Theatre.Buy your ticket here.

Other feature films at Fantasia directed or co-directed by women:
Fatal Frame by Mari Asato
The Invitation by Karyn Kusama
Crimson Whale by Park Hye-mi
Goodnight Mommy by Veronika Franz & Severin Fiala
Turbo Kid by François Simard, Anouk Whissell & Yoann-Karl Whissell Minuscule – La Vallée des fourmis perdues by Hélène Giraud & Thomas Szabo