Analysis of Bill C-47

| Jun 08, 2007

Bill c-47, the Olympic and Paralympic Marks Act that gives special extra-trade-mark protection to certain marks for the Olympics in Vancouver, passed Second Reading in the House on May 17 and went to the Industry, Science and Technology Committee for review. The report the Committee released yesterday makes a few important changes, summarised in Michael Geist’s blog.

The Bill says that:

3. (1) No person shall adopt or use in connection with a business, as a trade-mark or otherwise, an Olympic or Paralympic mark or a mark that so nearly resembles an Olympic or Paralympic mark as to be likely to be mistaken for it. (2) No person shall use in connection with a business, as a trade-mark or otherwise, a mark that is a translation in any language of an Olympic or Paralympic mark.

The phrase “Olympic or Paralympic mark” is defined to include words that are listed at the end of the Bill — see below for more information about that. Basically, this section means that you can’t use an Olympic mark (or anything that looks like one) as a mark for your business.

Then there are a bunch of exceptions to this — the Government and universities can use those marks for some purposes, and the place names can still be used in association with wines and spirits.

Then, in section 3(5), there was a clause that previously said that, “for greater certainty”, it’s okay to use the protected words or marks in a publication or broadcast of news or criticism related to the Olympics. It said that these uses are “not a use in connection with a business.”

One of the changes that came from the Committee yesterday was to amend section 3(5) so it now also specifically states that this exception is true for publications and broadcasts using “electronic media”. Another change was to include parody along with criticism. So the new “for greater certainty” clause will say:

3. (5) For greater certainty, the use of an Olympic or Paralympic mark or a translation of it in any language in the publication or broadcasting of a news report relating to Olympic Games or Paralympic Games, including by means of electronic media, or for the purposes of criticism or parody relating to Olympic Games or Paralympic Games, is not a use in connection with a business.

I take this to mean that blogs, podcasts and vodcasts can report on the Olympics and Paralympics, and can criticize and parody them as well, without infringing the new Act.

The Committee next added a very important and interesting clause that protects artistic uses of Olympics marks:

3. (6) For greater certainty, the inclusion of an Olympic mark or Paralympic mark or a translation of it in any language in an artistic work, within the meaning of the Copyright Act, by the author of that work, is not in itself a use in connection with a business if the work is not reproduced on a commercial scale.

There was one other recommendation that’s a Very Good Thing and affects bloggers and podcasters but, to understand it, you have to understand a bit about the mechanics of the Bill. The term “Olympic or Paralympic mark” is defined in section 2(1) of the Bill to mean “a mark set out in Schedule 1 or 2.” This is common in legislation — instead of listing all the protected words right there in the definition, they’re separated from the text of the Bill in an appendix. The Controlled Drugs and Substances Act works the same way, listing different controlled drugs in different schedules depending on the seriousness of the crimes related to them.

In this case, there are three schedules listing protected marks. Schedule 1 lists marks related to the Olympics in general and the Canadian Olympic Committee: “Canadian Olympic Committee”, “Citius, Altitus, Fortius”, “Jeux olympiques”, “Olympian”, “Spirit in Motion”, the rings logo — that sort of thing.

Schedule 2 lists marks specifically related to these Olympic games: “Canada 2010″, “Canada’s Games”, “Jeux de Whistler”, “Sea to Sky Games”, “VANOC”, the smiling inukshuk logo — that sort of thing.

Schedule 3 lists other words, the ones that have gotten a large amount of the critical press, words like “Games”, “2010″, “Twenty-first”, “Medals”, “Winter”, “Vancouver”, and “Gold”, “Silver” and “Bronze”. These words aren’t prohibited outright, and are not included in the definition of “Olympic or Paralymic mark”. To understand why they’re there, you have to look at section 4 of the Bill.

Section 4 basically says that you can’t promote your business by using your logo together with words that make it look like you are associated with the Olympics. So if you have a podcast you can’t use its logo or name and say “The Official Podcast of the Vancouver Games” (not that you would ;-) . This section doesn’t refer in particular to the words and marks in Schedules 1 and 2. Instead, it says that a court can take into account the person’s use of words in Schedule 3, words like “Gold” and “Sponsor” and “Vancouver”. So, presumably, even saying “Electric Sky: The Gold Podcast” *might* be considered to be promoting that podcast in a way that misleads people to think it’s associated with the Olympics.

So, after all that, what change did the Committee recommend? The earlier version of the Bill had a sunset clause that will repeal everything in Schedule 2 on December 31, 2010 — that’s the list of words and marks related to the Vancouver Games in particular. The Committee’s report recommends also sunsetting everything in Schedule 3 on the same date.

It’s worth noting that this will leave everything in Schedule 1, the general Olympic and Canadian Olympic Committee marks, with special protection under the new Act. That’s protection over and above what they have had in the past under the Trade-marks Act.

There’s more to this Bill, of course. Most complicatedly, the Definitions section includes this statement that relates this Bill to the Trade-marks Act:

(2) Unless the context otherwise requires, words and expressions used in this Act have the same meaning as in the Trade-marks Act.

So all of the meaning of words in the Trade-marks Act apply to words in this Act, and there is a large body of court cases that discuss and analyze those words. In particular, I’d note that the word “Use” is a defined term in the Trade-marks Act. Not every use of a trade-mark is considered to be “using” it under the Act. The Trade-marks Act only applies when a mark is used in association in the normal course of trade in the case of goods, or if used in the performance or advertising of services. Otherwise, it’s not considered a “use”. I don’t think this is widely understood, but it means that you can use many logos and trade-marked words or phrases in your podcast because you’re not using them in the course of trade.

Some links for reference:

The current version of Bill C-47: http://www2.parl.gc.ca/HousePublications/Publication.aspx?Docid=2764652&file=4

The Committee’s report: http://cmte.parl.gc.ca/cmte/CommitteePublication.aspx?SourceId=209608

The status page for the Bill on LEGISinfo: http://www.parl.gc.ca/LEGISINFO/index.asp?Language=E&query=4921&Session=14&List=stat

The RSS feed for the Bill (yes, there are RSS feeds for Bills!): http://www.parl.gc.ca/LEGISINFO/xml/C-47-e.xml