Excessive Non Cents about "One Cent"

The Royal Canadian Mint and the City of Toronto are apparently engaged in heavy negotiations about the City’s “use” of the words “one cent” and an image of the Canadian penny in the City’s One Cent Now campaign. Now, as every IP lawyer should know, “use” is a word that must be used with great care.

According to the National Post:

...a spokesman for the city-led campaign, said the mint wants $10,000 for the use of the words “one cent” in the campaign Web site address (www.onecentnow.ca) and the campaign e-mail address (onecentnow@toronto.ca), and an additional $10,000 for using the words in the campaign phone number (416-ONE-CENT). The remaining $27,680 has been assessed against the city for the use of the image of the penny in printed materials, he said.

I wonder what feat of legal genius came up with the precise number of $27,680?

Now, far be it from me to meddle in others’ legal affairs, when I am sure that there must be numerous highly paid IP lawyers hard at work here, but I do visit Toronto now and then and I am a citizen of Canada, from whence the Mint derives its power to literally coin and print money - my money - paid from my taxes. I want to see it spent wisely. A penny saved is a penny earned.

Let’s take a look at the facts and the law here.

According to Wikipedia, which sometimes presents facts accurately, the Maple Leaf image on the coin in question dates from 1937, when it was created by one George Kruger Gray who died in 1943. In any event, s. 12 of the Copyright Act would put the image into the public domain no later than 50 years from creation, namely in 1987, assuming that the Mint, in 1937, was an emanation of the Crown under the direction and control of His Majesty, as Her Majesty then was. And even if that isn’t right for whatever reason, any possible copyright that Mr. Gray could have had would have expired and gone into the public domain no later than 1993, fifty years after he expired.

Game over on the copyright claim.

Even if there is copyright involved, which seems implausible, the lawyers involved should look at the wonderful Allen v. Toronto Star appellate decision from the Ontario Divisional Court case from 1997 - about how incorporating one work into another is not necessarily actionable reproduction of the first and may be fair dealing as well. That was about including the picture of Sheila Copps on a motorcycle included in the front cover of Saturday Night magazine as part of a news article in the Toronto Star.

It’s true that this image of the back of the penny was “advertised” (i.e. effectively “registered” for non TM lawyers) as an official mark as of June 2, 2004.

Now official marks are not quite the same as trade-marks. They have both more and less punch, depending on a number of factors. However, in light of the recent Supreme Court of Canada jurisprudence about attempting to use trade-marks law to extend the monopoly rights from an expired patent, i..e, the Lego case, I doubt that the Mint would get far with their "official mark" here.

Frankly, I can’t see how this official mark is going to get the mint anywhere in this instance, especially since the City of Toronto arguably hasn’t “adopted” the mark as a mark...it’s just showing a picture of a penny.

As for the claim to the use of the term “one cent”, gimme a break. It’s not covered by whatever mileage the Mint could get out of the official mark advertisement, because the case law and blatant common sense says so.

I hope that the lawyers working on this are having fun. A penny for whatever legal thoughts may be operative or inoperative in respect of asserting or not being able to get rid of these claims and whether taxpayers are being well served paying for all this fun would be greatly appreciated.

A little common sense should prevail. And if this case goes to Court, it may well bring some further sense to the sometimes twisted distortions of the “official marks” provisions of the Trade-marks Act, that the Canadian Olympic Association above all has used to go further, faster and higher (or doubtless lower in the eyes of many of the defendants it has sued) to squeeze every last cent possible for the COA from large and small businesses alike.

Unless I’m missing something, the only reason that I can think of for the Mint to be taking its present aggressive position over one penny is that it is trying to recover the loss of the all of those 129 pennies paid in reimbursement for a package of gum to the Hon. David Dingwall, former President of the Mint, who coined the immortal phrase that worked such wonders for the Liberal Party - “I am entitled to my entitlements.”

His entitlements indeed included $417,780 in severance - but I don’t know whether the gum was included or not in the final calculation. Or whether that figure has been rounded off to the nearest dollar.

Maybe this is the Mint’s real revenge and inCENTive.

Sorry... :-(

Anyway, that's my two cents' worth.

HK