Ending its nearly 20 year battle with the "gripe site" UNTIED.COM, United Airlines Inc. has been victorious in obtaining an injunction against the owner of a gripe site on the basis that the gripe site infringed its registered trademarks in Canada[1]. While the defendant could retain the use of the domain name www.untied.com, the use thereof must not be in association with the same services as provided by the Plaintiff.
This is a good result for Canadian trademark owners. Parody and satire are not defences to trademark infringement. In attempting to "spoof" a trademark, defendants cannot "cash in" on the goodwill associated with other's marks.
Background
A professor of electrical engineering at McGill University, Dr. Jeremy Cooperstock, started the website UNTIED.com in 1997 in which he discussed his negative experience with the plaintiff United Airlines. On his site, Cooperstock prominently used altered version of United Airlines' marks, including a globe logo with a frown. After launching his webpage, Cooperstock started receiving and posting letters from other travellers regarding their negative experiences and continues to maintain UNTIED.com as a consumer criticism website where visitors can find information on the United Airlines, submit and read complaints about United Airlines dating back to 1998.
United Airlines commenced proceedings to try and get the website taken down on the basis of alleged trademark infringement.
Federal Court Decision
The legal criteria for infringement under the Canadian Trade-marks Act requires, among other things, that there be "use" of a confusing trademark by an allegedly infringing party in association with the sale, distribution, or advertisement of any goods or services in association therewith. Not surprising the parties disagreed on whether there was "use" of United Airlines' trademarks in association with "services" on UNTIED.COM.
The key element of offering "services" is whether there is a benefit to the public, which does not require a monetary element. Cooperstock was offering information and guidance to disgruntled flyers, similar to offering a "consumer help line". As such, the court found that Cooperstock did in fact offer services through his UNTIED.com. Given that there were services offered on Cooperstock's gripe site, Cooperstock then argued that the marks displayed on UNTIED.com were not being used to distinguish his
services from those of others. The court found, however, that Cooperstock's marks were being used or displayed in the advertising or performance of services pursuant to the Trade-marks Act, which constituted use. On this basis, the court found that Cooperstock had infringed United Airlines registered trademarks. As a result, United Airlines was entitled to an injunction restraining Cooperstock's use of its marks on the UNITED website.
[1] 2017 FC 616
