In United Airlines, Inc. v. Cooperstock, 2017 FC 616, the Federal Court of Canada enjoined a disgruntled traveler from using colorable variations of United Airlines’ trademarks on a protest website he set up at www.untied.com.
Using an anagram of the official www.united.com website as a domain name, the impugned material posted on the site included adulterated versions of United Airlines’ trademarks such as:
United Airlines succeeded in its action for trademark infringement, passing off, depreciation of goodwill and copyright infringement. Presented with “valuable and credible” evidence of actual confusion from a travel agent who has mistakenly tried to file a complaint with the airline on Cooperstock’s website, the Court found:
- A trademark can be used in association with a “service” even where there is no monetary or commercial element;
- parody should be understood as having two basic elements:
- the evocation of an existing work while exhibiting noticeable differences; and
- the expression of mockery or humour;
- parody and satire are not a defence to trademark infringement in Canada;
- parody and satire may fall within the fair dealing exception to copyright infringement but not on the facts of this case because:
- the defendant’s real purpose was to defame or punish United Airlines; and
- using the copyrighted works contributed to consumer confusion.
Brand owners have struggled to stop unauthorized use of their trademarks on protest and parody sites. The Court recognized that free speech is important but not unrestricted and cannot be invoked to protect clear misappropriation of trademarks. Clearly, adulterated versions of trademarks cannot be used on protest sites when they cause actual confusion as to the site’s authenticity.
Notably, despite finding actual confusion, the Court stopped short of ordering the www.untied.com domain name transferred.