Written by Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan
A joke does not work if it needs to be explained. While some complaint and parody websites may constitute fair dealing, close copying of trademarks and copyrighted works, combined with mean-spirited commentary, will not fly.
United Airlines, Inc. v. Cooperstock, 2017 FC 616
Dr. Jeremy Cooperstock is an engineering professor at McGill University in Montreal. In the late 1990's, he started a personal web page titled "Poor Show" to share his negative experiences with United Airlines. After receiving letters from other travelers reporting similar incidents, he registered the domain Untied.com ('Untied' being a play on the word 'United' to connote disorganization) and used it as a consumer complaint site. After several years of operation, Cooperstock launched a redesign of the Untied website which closely resembled, and was meant to invoke, the United Airlines website. This included the same font and size for the word UNTIED and a modified version of United's Globe logo with a superimposed and crudely drawn frown.
After sending several demand letters, United Airlines sued Cooperstock for trademark and copyright infringement.
United Airlines prevailed on all issues.
On trademark infringement, Cooperstock unsuccessfully argued that the modified trademarks on his website could not infringe United Airlines' registrations because he was not providing a "service", particularly since there was no commerce involved (he received only nominal income through advertising and donations). The Court rejected this argument, holding that the key element of "services" is the benefit to the public. Comparing the website to a consumer help line, the Court found that Cooperstock offered services of information delivery and advice on legal rights.
In finding a likelihood of confusion, the Court relied heavily on the close similarity between the marks and the nature of the services. Evidence of actual confusion, while neither necessary nor determinative, was filed by United Airlines. This included evidence from a travel agent who mistakenly submitted a complaint intended for United Airlines to Cooperstock's site, and also documents that showed consumers made complaints to Untied.com that were intended for United Airlines.
This evidence, in addition to the disparaging uses of United Airline's trademarks (the angry eyes and frown imposed on the Globe logo) assisted United Airlines in succeeding in its depreciation of goodwill claim.
On the copyright claim, there was little debate that Untied.com was a substantial copy of the United Airlines site. Cooperstock's defence was that his website was a parody of United Airlines and constituted fair dealing. The ability to claim parody as fair dealing has only been part of the Copyright Act since 2012, and has received little judicial consideration since. While not defined in the Act, parody has two components: the evocation of an existing work while exhibiting noticeable differences and the expression of mockery or humour.
After questioning whether parody could ever be successfully invoked when there is consumer confusion, the Court found the dealing in the copyrighted works to be unfair. The intent was mean-spirited and meant to defame or punish United Airlines, not humorous criticism.
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