This is not a post to explore some recent IP news or to discuss anything all that sophisticated or groundbreaking. I thought this might a bit fun and a good warm up for the exam on Tuesday. This could also be a great opportunity to squeeze in some last minute participation marks. So, I invite you all the consider the following and put your IP thinking caps on.
With a long week of studying ahead of me, I went to the dollar to stock up on junk food. As I walked through the aisle, I noticed this.
As Professor Festinger said in our early classes, you will never look at the world the same way again after studying IP. He was right, because I immediately started going into analysis mode as I stared at these cookies. I think the other people in the aisle were getting a bit concerned with my intense focusing gaze towards the Oreos. This single image raises multiple legal questions.
So, let’s pretend we represent either Christie or Biskwi. Let’s examine the following:
How could Christie (Oreos) make an argument against Biskwi (Cookies) for violating:
- Copyright?
- Passing Off?
- Trademark?
- Patent?
How could Biskwi defend themselves for each category?
How could either Christie or Biskwi argue an IP violation against ME for making a post about them?
How do I defend myself against those arguments?
Of course, we don’t have all the information from a simple photo and there is need for use to examine the history of these cookies. To address the points, use some creative liberty or hypothetical thinking to fill in the gaps. For example, how do we answer the patent question if we assume Christie invented a way to make shelf-stable milk products? Also, don’t feel like you have to answer everything. If you only want to comment on whether or not this post counts as a telecommunication to the public, or if Oreo has any goodwill, that’s fine as well. Every bit counts.
I wish everyone good luck on Tuesday!
Communications Law
Ok, I will bite.
Always start with the easiest question.
1) No copyright exists here. Per S5 (1) Not an original literary, dramatic, musical and artistic work
As for the rest…https://www.linkedin.com/pulse/analyzing-legal-battle-between-two/
Not in our jurisdiction but none the less interesting.
Good night Max!
Doris
Hi! Here’s my attempt to address the potential issues in copyright, passing off and trademark arising from the design and marketing of Cookies Biscuits in comparison to Oreos.
The issue of potential copyright infringement arises concerning the design of Cookies Biscuits in comparison to Oreos. This possibility hinges on whether the design qualifies as an “artistic work” subject to copyright (ss.2, 5, Copyright Act). Factors including logo design, color, and layout of the packaging, and potentially the pattern on the cookie can constitute “expression in a visual medium” (DRG v Datafile). Fixation and originality in the packaging design appear to be fulfilled. To establish infringement, the key considerations include whether a substantial part of the copyrighted work is reproduced (s.27(1), s.3(1), CA, Cinar Corp v. Robinson). Notably, the combination of major design elements, including the logo, layout, color and pattern design, might be argued to reproduce Oreos to a high degree. The originality of Christie’s work could warrant protection. A potential counterargument might involve fair dealing under s.29, possibly invoking parody, though the absence of noticeable differences or expression of mockery or humor limits its viability (United Airlines v. Cooperstock).
Christie might have an action against Biswkit in passing off. The elements including the existence of goodwill, potential deception due to misrepresentation, and resulting damage seem to be made out. Oreo is probably one of the most distinctive cookie brands in Canada and worldwide, contributing to its goodwill. The shared elements in the get-up and design of Cookies Biscuits with Oreos, including the blue packaging, similar logo design and the appearance of a black-and-white cookie printed on the packaging raise concerns about potential consumer confusion, particularly among hurried shoppers. The potential damage encompasses the loss of goodwill and reputation for Christie, along with the loss of trade resulting from customers mistakenly purchasing Cookies Biscuits thinking they were Oreos (Reckitt & Colman). In defense, Biskwit may assert ownership of a registered trademark for Cookies Biscuits, but the name is likely to be clearly descriptive and/or the get-up is liklely toe be confusing with existing trademarks, rendering it unregistrable under s.12(1).
An action in trademark infringement can be brought together with passing off. Based on my research, Christie has registered trademarks in Oreo, covering the name, logo, and pattern on an Oreo cookie. There has clearly been use of these trademarks (s.45(1)). The unauthorized use by Biskwit raises the possibility of trademark infringement under s.20, as the design of Cookies Biscuits may be confusingly similar to the registered trademark, even though it does not use the identical mark. Factors such as the high degree of resemblance, inherent distinctiveness of Oreos, and the exact same nature of wares and trade contribute to the likely finding that Biskwit’s use is confusing. Moreover, Biskwit seems to have used the marks in order to stress similarities with Oreos, which would infringe s.22 as it appropriates the value of the goodwill associated with Christie’s registered marks (Future Shop v A&B Sound). Based on Veuve Clicquot, however, Christie has to show evidence that such use has an effect of their goodwill and that it depreciates its value.
Overall, the distinctive nature of Oreos and the ownership of registered trademarks makes for a substantial likelihood of success for Christie in copyright, passing off, and trademark claims against Biskwit.
— Megan Louie
Nice reply Megan!
Copyright:
I pretty much agree with everything you have to say there. The name and the box as a whole should be an artistic work. If colour coded labels are artistic as per DRG., then word and box design should be here as well. Also, I am reminded of the Atari case with the game Breakout. There, the court held that basic shapes and colours can be copyright. The judge said something along that line that basic shapes and colours are what Picasso drew, and it is hard to argue that Picasso did not make anything artistic.
The right invoked here is indeed reproduction. As you said, CINAR holds that it does not need to be an exact reproducing. The reproduction should be viewed based on quality not quantity, and I dare say that the overall quality of the box is a reproduction. However, I wouldn’t say that the name is a reproduction. It’s a different font, it’s not 3d, and the word is different. The only main similarity is the blue/white colour scheme, but they use different shades of blue. I think that substantively, the name is not a copy.
I agree that there is not a good fair dealing argument. The purpose is clearly commercial, so I don’t think it would even make it past the first state. If like you said the purpose is perhaps parody, the fairness factors certainly work against Biskwi. The parody might be disguise for the true purpose of business, there is a high amount reproduction, it includes a large amount of copied work, and it will affect Oreo sales.
You can’t see it that well on the picture, but Oreo’s packaging uses the words “thin, crisp, delicate.” Is that slogan copyrightable as an original literary work as per s.2 and s.5? In other words, could Biskwi use those same words, and equivalent words on their packaging?
As an additional question, what copyright infringement might I have done in posting this image?
Passing Off:
Absolutely, Oreo does have goodwill here with a distinctive get-up. The one concern I have is that perhaps Oreo lost their goodwill over time, or maybe never had. Oreo is argued to be a knock-off of Hydrox cookies. If so, can Oreo claim the goodwill of a chocolate/cream cookies in a blue and white box, or does that goodwill belong to Hyrdox? I don’t think I have ever seen Hydrox in Vancouver, so Oreo does have the greater regional goodwill. Also, it’s possible that Oreo is generic. Do people call any chocolate and cream cookie an Oreo? Do we associate the cookie as being particular to the brand? Maybe Oreo has gone the way of the Popsicle or the Band-Aid.
As for the cookies themselves, I don’t think they are distinctive or have gained secondary meaning. I am thinking of NOVOPHARM v. BAYER. There, the court held that consumers don’t really care about who produces the pink round pill, only that is has a certain effect. Here, it could be the same thing. People might not care that they get Oreo or Biskwi, they just want a cookie. For example, if there was tray with a mix of Oreos and Biswki, would you really try and pick out the Oreos, or just grab whatever cookie you could? However, since the cookies are sold in the box and not sold in bulk, it is not entirely comparable.
There is certainly deception that may lead to confusion. The shopper in a hurry could easily grab a Biskwi box instead of an Oreo one based on the entire get up.
For damage, Oreo could seek an injunction without have to prove any actual loss.
Trademark:
Indeed, Oreo has the trademark. S.19 would not apply because Biskwi are not using an exact replica, but s.20 could apply for confusion. The wording however might be a stretch. Cookies/Biscuits is not really confusing with Oreo. I don’t think the ordinary shopper in a hurry would make the connection. There are many cookies which are not Oreos. Oreo does not have trademark on the box design (I am assuming they don’t). So, the most confusing element is something that is not protected. This is where trademark is distinguishable with passing off I think. Passing off looks at the get-up as a whole, while trademark only looks at what is protected by trademark. If you read s.20(1)(c)(i-ii), I don’t think confusion applies here in the trademark sense. There is nothing on the Biskwi box that is Oreo’s trademark or similar to their trademark, without a trademark, there is no confusing a trademark. I agree that the get-up is confusing, but there is no confusion with the trademarked elements of the get-up.
I don’t think s.22 applies either because a requirement there is to use the exact mark. This is not an issue of confusion, but a direct use of the mark. Revlon directly used Clairol. A&B Sound directly used Future Shop. These are exact replications of the mark. Without that replication, you can’t even start a s.22 analysis. Again, unless Oreo has a design on the box style, Biskwi is not actually using anything registered by Oreo. If on the box they made a side-by-side comparison with Oreos, then s.22 would apply.
Aside for that, if Biswki did use a mark, they likely have no defence. They can’t expunge for lack of use, but Oreo clearly used the mark in the last three years. They can’t expunge for validity, because Oreo would likely not run afoul of s.18.