Monday, April 18, 2011

Attacks on the website

With all the muddled and mangled commentary over the #iPodtax (Twitter hash tag) issue and the Conservative Party of Canada (“CPC”) website attacking the opposition, a recent story from Global and its related websites adds to the cacophony. The story dated Friday, April 15, 20111 oddly appears only in cached format here.

The story suggests that Liberal Party of Canada (“LPC”) sources believe that the Conservative website violates Apple’s trade-mark rights because the site is called  There are also some vague references to copyright infringement.

It’s no surprise that “IPOD” is a registered trade-mark in Canada, but that won’t stop the CPC website or the use of the URL

The LPC position, if accurately reported. is a non-starter legally. The CPC is not trading in iPods or anything remotely resembling any products or services that Apple sells. Trade-marks law does not prevent the “use” in language of the trade-mark for descriptive, critical or other legitimate purposes. If I say that I like to listen to music on my iPod, that is not a trademark “use” that requires permission. If I say that I think the sound of my iPod is great - or lousy - that is also not a trade-mark use. If I say that I am opposed to an iPod tax, that is also not trade-mark use because I am not selling iPods or any remotely similar product.

As far as the domain name goes, Apple would have no case to attack the CPC for using the domain name “” That is simply because nobody would believe as a matter of first impression or otherwise, that there is any connection between the domain name and the trade-mark owner, Apple.  Moreover, whatever one may think of the politics behind the website, the use of the domain name does not come close to meeting the “bad faith” requirement that must be proven to result in a domain name being taken down under  “.ca" dispute resolution policy. The CPC is simply not a “cyber squatter”.   

Besides, one would be astounded if Apple were to actually be upset about this website, since Apple has spent a lot of money, along with my client the Retail Council of Canada, in successfully fighting an iPod tax at the Copyright Board and in the Federal Court of Appeal. I know because I have been involved in those battles from the beginning.

The cached article also quotes Michael Geist as saying, among other things, that “If this were any other person or any other circumstance, one could well see Apple filing a complaint on it”. The reporter says “Geist said the use of the trademark is even more sensitive this time because it is being used for political purposes.”

With respect, I must disagree with Michael this time. Anyone has a right to set up a “.ca” website discussing the policy implications of an “iPod tax” and use the term "iPod" as part of the URL, as long as is can pass the tests in the CIRA domain name dispute registration policy - as would clearly be the case here. The fact that the registrant has a political motive is not determinative or even relevant. A site called “” would be perfectly fine as long as it is devoted to that issue.

In any event, here are some simple facts about the “iPod tax” issue in this election context.

It is true that the LPC is no longer proposing an “iPod tax” as such on each device sold. Instead, it stated on December 16, 2010 that:
Specifically, the Liberal Party will seek to introduce a new Private Copying Compensation Payment of $35 million to be transferred to Canadian artists each year, through the Canadian Private Copying Collective (CPCC).  Liberals are proposing a new statutory program, written in law within the Copyright Act, which will increase at the rate of inflation and be reviewed every five years.
One can debate whether or not $1 per year for every living and breathing Canadian to be paid for out of a government taxpayer funded program and etched in stone in the Copyright Act is or is not good policy and is or is not preferable to an “iPod tax” collected by the CPCC under the authority of the Copyright Board. But the LPC’s proposed  fund indeed would be paid for out of Government revenues received from income taxes. Whether or not it would technically be a “tax”, it would clearly be paid for by all taxpayers and not just by consumers of iPods. I won’t even comment here on why the LPC proposal would also eventually surely result in almost all of the money leaving the country if and when Canada ratifies the 1996 WIPO treaties. More to follow on the national treatment issue later.

It is interesting to note that just today two very accomplished law professors are broadening the ambit of the word “tax” in the context of copyright law. Michael Geist speaks of a “Playbook tax” and Ariel Katz suggests that the challenge I fought in the Federal Court of Appeal a few years ago on behalf of the Retail Council of Canada about the constitutionality of a tax on blank CDs and which came very close to succeeding may still be open. He says:
In 2004 the Federal Court of Appeal considered some of these question, but found that the blank media levy is not a tax but a regulatory charge and therefore constitutionally valid.  The decision, however, is rather confused and confusing, so it is not unlikely that the constitutionality of the levy may have to be determined once again.
Also, it is a simple and indisputable fact, documented by the Copyright Board itself,  that the CPCC did actually ask for a levy of $75 for iPods over 30 GB in capacity in 2007, the last time it asked before the Federal Court of Appeal reiterated that only Parliament and not the Copyright Board can impose such a levy.


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