Amelia Manera is a JD candidate at Osgoode Hall Law School.
Toronto’s Caribana festival, currently operated by the Festival Management Committee (FMC), has been ordered to give the festival a different name as part of the Ontario Superior Court ruling that the Caribana Arts Group (CAG), the founder and original operator of the festival, owns the trade-mark rights to “Caribana.”
News of the court-ordered re-naming of Toronto’s Caribana festival was reported last week in several online articles that can be seen here, here, here, and here.
The Caribana festival was started by the CAG in 1967. In 2006, after the City of Toronto denied funding to CAG due to inadequate financial statements, FMC began managing the festival as a result of an agreement made through the City of Toronto between CAG and FMC. Interestingly, at the time management changed hands, the festival name reportedly had to be changed to the “Toronto Caribbean Carnival” because the Caribbean Cultural Committee (CCC, now the CAG) owned copyright in the name “Caribana.” While the Toronto Caribbean Carnival may have been the official name, the festival itself continued to be referred to as “Caribana” by the public and FMC as can be seen on the Caribana official website, here.
Also, the agreement apparently did not include a licence to use the “Caribana” trade-mark. The CCC, and now the CAG, registered the name “Caribana” is association with wares and services including t-shirts and entertainment services. The registered trade-mark numbers are TMA485030 and TMA219611. The latter, the registered mark for entertainment services, has been in place since March 25, 1977 and CAG has been diligent in renewing the registration as required. Efforts by CAG to come to an agreement with FMC regarding trade-mark usage have been unsuccessful, which led CAG to seek an injunction against FMC. On May 12th, the Ontario Superior Court ordered FMC to change the name of the festival and held CAG as the rightful owner of the trade-mark “Caribana.”
CAG continues to assert that it would welcome a licensing agreement with FMC for the use of the “Caribana” trade-mark. A licensing agreement would allow FMC the use of the trade-mark “Caribana” while allowing CAG to remain in ultimate control of the mark’s usage. It could also include compensation for the usage. FMC, however, appears to be moving ahead with the name change.
Spokespersons for the FMC commented in an article, here, that the re-naming of the festival will improve participation in the festival as well as participant perceptions. At first glance, the commentary appears similar to that surrounding the Starbucks re-branding of its mermaid logo, as blogged about here, however, in the Caribana case there is the added intention of moving away from negative connotations associated with troubles the festival has experienced over the past few years. Movement such as this will likely take more than a mere name change to accomplish. As was also said in the article above, the public will still be aware that the new name refers to the Caribana Festival.
The new name of the festival, The Scotiabank Toronto Caribbean Carnival, was announced on Wednesday.
4 Responses
I am curious about the statement: “the festival name reportedly had to be changed to the “Toronto Caribbean Carnival” because the Caribbean Cultural Committee (CCC, now the CAG) owned copyright in the name “Caribana.” ”
How can copyright subsist in the word “Caribana”? Is it an original literary work pursuant to s. 5(1) of the Copyright Act? If not, how does it attract the rights associated with copyright? Either Ms. Manera is mistaken, or I’m missing something.
Aaron Schwartz
Thank you for your comment, Aaron. I also thought it was strange that copyright would subsist in a term that is a registered trademark. If you follow the hyperlink embedded in that sentence you will find an article that indicates there is copyright in the term ‘Caribana.’ It is not registered as such on CIPO. Perhaps the original article meant to indicate a trademark in ‘Caribana’ as opposed to copyright. Thank you for commenting and helping to clarify the situation.
Amelia
There can be no copyright in the word Caribana itself: attempts to claim copyright for Exxon and Expo 86 were rejected by the English and BC Court of Appeals, respectively some time ago. The only way copyright could exist for Caribana — and of course federal registration for copyright is only optional — is for any artistry used in depicting the word; for example, the script flourishes for Coca-Cola. Copyright would then exist in the artistic form if it was original but would not extend to the word in ordinary fonts. I don’t much like this overlap of copyright and trade-mark rights and would prefer a rule that said once any copyright is exploited as a trade-mark, the Trade-marks Act is the sole source of right. Otherwise you can end up with cases where parallel imports of trade-marked goods cannot be stopped under the Tm Act but can under the Copyright Act if the mark happens to be protected by copyright as an artistic work: see the Kraft v Euro Excellence case in the SCC a few years ago.
Thank you for the clarification, Prof Vaver, and the information about potential overlap of IP rights.
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