Litigation Night in Canada

CTV may have just bought the most expensive rights to something they can't use ever.

There are going to be at least two law suits in the very near future: the first will be launched against the composer of the original theme song to Hockey Night in Canada (HNIC). The argument will be that CBC is entitled to a gigantic chunk of the proceeds of her licensing agreement to CTV as it was their tireless promotion of the piece, under which she was already being paid a licensing fee, that created the value which she was subsequently able to sell.

The concept is called "unjust enrichment" - it occurs when a rightful owner makes off like bandit because of the hard work that someone else has invested into a thing for their benefit. I don't know if the CBC will be successful, as the negotiations in good faith between the parties will be "exhibit A" in the statement of defence - but it will be interesting nevertheless.

Down the street in Federal court...

The CBC should initiate a lawsuit, in very short order, claiming TRADE-MARK ownership over the theme song.

Yup. Trade-Mark.

Intellectual property is many things, but the one thing it is not is clearly defined. A thing (song, cartoon, movie character, patented medicine, un-patented medicine) can have more than one intellectual property type based on its use and its creation. For example - and this is the leading example which will be the first case the CBC relies on- Mickey Mouse was created in a copyrighted work entitled "Steamboat Willie," and has appeared in thousands of other copyrighted works. No one disputes that.

But, Mickey Mouse is also a Trade-Mark of the Walt Disney corporation.

Fast forward to Canada's Trade-Marks Act. A world leader in IP protection. 4(2) reads:

A trade-mark is deemed to be used (common law TM) in association with services if it is used or displayed in the performance or advertising of those services.

There is a reason that the CBC (HNIC song sold to CTV) is reporting the story a slightly different way than CTV (CTV nabs a classic). Every single person interviewed has said "wow, how did HNIC let that get away?" Why? Because they associate it with the program. The song does not stand on its own. In purchasing the song, CTV is attempting to pass off on the brand CBC created over the last 40 years.

This is where the judges come in - can a song be a trade-mark? The act defines what a trade mark, but doesn't define what a mark is. The TM definition includes:

(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

Ask a person who watched HNIC as a child, who is now blind, how s/he knows HNIC is on TV.

For the record, a Trade-Mark does NOT have to be registered to be a trade-mark. You can have a trade-mark right established by common law- through use and association.

Another way of thinking about it is what songs are distinctive to the performers? Or to the things they subsequently stand for.

There are loads of cases (See FOX on TradeMarks) that can be used by both sides, internationally, on what can constitute a mark - and I can guarantee that if *I* was in charge, this will be litigated all the way to the Supreme Court.