The Tragically Hip (The Hip) is suing Mill Street Brewery (Mill Street) over “100th Meridian” Beer. The action was commenced in the Federal Court by Statement of Claim dated February 9, 2021 (Tragically Hip v. Mill Street Brewery).
This case is sure to create fireworks and attract media attention given the extremely large fan base of the band, and others, who may have been confused and or mislead into thinking that there is an association between the beer and the band.
At the core of the dispute is the hit song “At the Hundredth Meridian” which was released by The Hip on its 1992 album Fully Completely. It has been a long time running, but not quite 38 years old. The beer 100th Meridian was released by Mill Street in about 2014. The fight as set out in the Statement of Claim focuses on a number of trademark and copyright issues including:
- passing off pursuant to section 7b of the Trademarks Act S.C 1985 c. T-13 (Trademarks Act);
- false and misleading representations contrary to section 52 of the Competition Act S.C 1985, c C-34 (Competition Act);
- infringement of the registered trademark THE TRAGICALLY HIP contrary to section 20 of the Trademarks Act; and
- depreciation of goodwill contrary to section 22 of the Trademarks Act for the unregistered trademarks THE HUNDREDTH MERIDIAN and THE HIP and the registered trademark THE TRAGICALLY HIP.
In addition, The Hip seeks to invalidate (or expunge) trademark registrations owned by Mill Street for their 100th MERIDIAN trademarks. Copyright infringement is also alleged pursuant to sections 3 and 27(1) the Copyright Act R.S.C., 1985, c. C-42 (Copyright Act) for among other things, improperly reproducing album covers such as Trouble at the Henhouse and Day for Night, which were allegedly used in promotion of the beer.
Other relief being sought includes an order to require Mill Street to publicly state that it (and its beer) is not associated with the band and to take down its social media posts that make any such association. Injunctive relief and damages, including punitive damages are also claimed.
The Statement of Claim incorporates several images in support of the allegations, including Facebook posts, Instagram posts, and tweets which are intended to show that Mill Street associated its 100th MERIDIAN beer with the Hip by various means.
As we are on the verge of the proceeding taking shape, a Statement of Defence has not yet been filed. It is yet to be seen whether Mill Street has the wherewithal to defend these allegations or run scared.
An interesting question, given the various limitation periods in play for enforcement of intellectual property rights (i.e. typically six years in respect of trademark infringement actions in the Federal Court and three years under the Copyright Act), is why is this action being brought now. Has the band been killing time? Did out of court discussions not yield satisfying results such that the Hip is feeling so hard done by? Practically, relief can still be granted despite the limitation periods. However certain remedies may be truncated by how far back one can reach for the relief requested. For example, were damages to be awarded as part of a successful judgment, the band may not be able to recover damages going back in time more than 6 years for any trademark infringement. One would expect that Mill Street’s defence will assert some form of limitation defences, and possibly laches.
The geographic element of the marks will also be an interesting battle point. The meridian 100° west is a line of longitude that extends from the North Pole to the South Pole. In Canada, it is typically considered to be around where the great plains begin. It is noteworthy that a quick search of CIPO’s online records indicates that Mill Street was able to obtain registration for its marks, without an office action raising geographic origin. The Mill Street trademarks appear to have been allowed without any office actions. However is the mark clearly descriptive or deceptively misdescriptive of geographic origin contrary to sections 12(1)(b) and 18(1)(a) of the Trademarks Act? Both parties have marks that play on this geographic origin. As such a finding on this issue could be equally damaging.
A further defence to look out for is in response to the allegations of depreciation of goodwill. In this action the allegation is extended to unregistered trademarks. Section 22 is typically understood to relate only to registered trademarks and not common law rights. The wording of the statute specifically references registered trademarks.
It seems that both sides of this battle may be able to make use of rules to assist their cause. With this is mind it is not clear if The Hip or Mill Street will be ahead by a century in the legal arena.
The legal issues at play in this action are substantial and undoubtedly have significant commercial value. Managing one’s IP portfolio and monitoring social media for misuse are reminders that everyone can benefit from. Especially now, with the ever present use of social media and the increased virtual world, companies should not wait until there is a fire in the hole to strategically evaluate their IP.
Trademarks and copyright help protect valuable intangible property and may be intricately linked to reputation. Registered and unregistered rights offer varying degrees of protections. As such, combining a myriad of IP rights is often a beautiful thing to add value to your company and to have the necessary armor to enforce your rights, if needed. I will bring it all back to this key lesson: IP sets your company apart and adds tremendous value. Protect it, fully completely.
I cannot help but hold out hope that this battle between the iconic The Tragically Hip and the award winning Mill Street Brewery finds a resolution that ends with us listening to great tunes, with a drink in hand enjoying happy hour.