Down The Trademark Rabbit Hole

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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

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