In September 2019, established Canadian author James Bow was accused of trademark infringement for using an image of the CN Tower on the cover of his recently released urban fantasy novel. The cover of the novel showed the CN Tower alongside various monsters and humans. Reuts Publications, the publisher of the novel, confirmed that the photo was taken from a stock photo website, for which a creative commons licence was in place. Further, the photographer who took the photo and made it available to the stock photo website was also aware of and consented to the use of the photo in the context in which Bow used it. However, Canada Lands Company Ltd. (CLCL), the Crown Corporation that manages the CN Tower, requested that the use of the image be discontinued immediately as the structure is protected by trademark law.
The CN Tower has made available a detailed Use of Images Agreement for any individual who wishes to use an image of the CN Tower. The Agreement states:
I therefore agree that I shall not, nor shall I authorize any other party to, distribute, sell, publish, broadcast and/or otherwise exploit any Tower Images, in any manner, media or territory whatsoever, without the express prior written consent of CANADA LANDS COMPANY CLC LIMITED, which may be unreasonably withheld or delayed, at such party’s sole discretion […] I further hereby agree to provide CN Tower with a copy of any such Tower Image, in its final form and context, as soon as available, and in any event prior to its release. CN Tower shall be provided a minimum of five (5) business days to review the image and approve or not approve of its use.
Further, the CN Tower appears on Adobe’s official list of known image restrictions.
The circumstances surrounding this alleged trademark infringement have raised questions with respect to whether the demand by CLCL is unreasonable. Bow’s lawyer, as quoted in a letter to CLCL by the Toronto Star, states:
The purpose of trademark law is to prevent confusion in the marketplace for specific goods and services, and to stop bad actors from ‘passing off’ counterfeit goods as the genuine article […] It seems unlikely that CLCL is active in the business of publishing novels, let alone fantasy novels featuring a strong female protagonist who helps trolls and goblins succeed in the human world through her work at an employment agency.
Enforcing trademarks on landmark buildings can have significant implications with respect to expression and creativity, impacting various industries such as photography, visual art, and filmmaking. If every noteworthy building in Toronto was protected by trademark, a simple picture of Toronto’s skyline could require multiple licences prior to publishing. The necessity to obtain these licences, alongside the fear of potential legal consequences, can very well encourage artists to stop or avoid creating certain forms of art. Moreover, in today’s technology and socially-driven world, many photographers share their work on social media platforms. These platforms can have an abundance of followers, especially considering the increasing number of individuals who have pursued entrepreneurial paths as paid influencers (consider the Toronto-based photographer and influencer TorontoOnTop, for instance). This raises the question as to whether publishing an image online, on a platform with hundreds of thousands of authentic followers, can create legal concerns in the case that the photographed landmark building is protected by trademark.
As a national Canadian icon, it is understandable that the CLCL must work towards protecting the image of the CN Tower from improper usage. The Canadian Trademarks Database lists the CLCL as the current owner of a design mark of the CN Tower with respect to a number of goods and services. However, as a national symbol and representation of Torontonian culture, do the CLCL’s allegations against Bow run counter to the purpose of trademark law? The main purpose of a trademark is to prevent unfair competition between companies and prevent consumer confusion. Architectural works are protected in accordance to the Copyright Act, RSC, 1985, c C-42, which provides that architects are in fact entitled to remedies upon infringement of their work. This copyright protection of architectural works has further been established and interpreted by Canadian courts.[1] With copyright law protecting the broader concept of any “original work,” it is questionable as to whether the protection of architectural work through trademark serves a necessary or beneficial purpose. The CLCL’s allegations against Bow and claims of ownership over the CN Tower’s trademark has, at the very least, created unease for many members of the public and for creators at large.
Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.
[1] Hay and Hay Construction Co. Ltd v Sloan (1957), 12 DLR (2d) 397 (Ont HC).
One Response
Despite the hoopla about potential “trademark” infringement of the CN Tower, artists should not fear the Canada Lands Company’s (“CLCL”) recent action for two reasons: 1) copyright law should apply and 2) trademark claims to the building are spurious.
Architectural works are defined in the Copyright Act and the proper domain of copyright. The Act also states that the reproduction of architectural works in drawings or photographs does not violate copyright – there is a right of panorama.
The purpose of trademark law is to protect against misrepresentations; however, the use of the CN Tower is unlikely to cause confusion or depreciation of CLCL’s goodwill. The hurried consumer would be unlikely to associate a book with the CN Tower on the cover with the CLCL, a property management company. A brief search of Amazon yields three different books with CN Towers on their covers that do not appear to be associated with the CLCL. Equally unlikely is that the CLCL has taken enforcement actions against the plethora of businesses that sell postcards, mugs, and other souvenirs that proudly display Toronto’s skyline with the CN Tower. Moreover, the mark may be challenged for being non-distinctive and genericized. People would likely associate the CN Tower with Toronto rather than CLCL, or its goods and services.
The CLCL should not have a valid action against anyone using the CN Tower in images. In copyright there is a right of panorama and in trademark the CN Tower is not distinctive of a good or service.