Tuesday, May 17, 2011

Basha & The Habs: Why Banners Are An Issue

I love Basha Restaurant. I grew up in Montreal and love their food. However, the unauthorized use of the Montreal Canadiens intellectual property is a problem. 

Yahoo's Puck Daddy recently reported that the Habs organization is requiring that Basha pay up for using its marks.

Basha first displayed the banner on the left on the side of a building. After receiving a complaint from the Habs, he concealed the Habs logo and "Go Habs Go", but kept the banner up:

Both are a problem from an intellectual standpoint. Let me explain why.

Unless Basha had the consent of the Canadiens, it was not permitted to use the trade-marks in the promotion of its business. By using the Habs' trade-marks, the suggestion is that Basha is affiliated with, or otherwise sponsored by, the Canadiens. Associating itself with the Habs is obviously good for business. However, unless it had permission to use the various marks by way of a license agreement, Basha can't do what it's doing.

Remember businesses pay handsomely for rights to use trade-marks of sports teams. The idea is that they are seen as an official sponsor of a team, which in turn can be good for business as it elevates the image and goodwill of the business.

So the overall commercial impression created by the banner on the left, complete with the Canadiens' trade-marks, is that Basha is affiliated with the Habs.

What about the banner on the right? Arguably a problem. While the Habs logo and the "Go Habs Go" mark have been concealed, the aggregate effect of the colours leaves the impression that the person in the banner is wearing a Habs jersey. That may also create a false impression that Basha and the Habs are connected. What doesn't help is that Basha is in Montreal and has a location a few blocks away from the Bell Center. That may also contribute to the possibly mistaken impression that a commercial relationship exists between the Habs and Basha. The second scenario, though, isn't clear cut.

Also, while the Habs logo has been concealed, it's been concealed in a way that has kept the imprint of the logo visible. So, as a matter of first impression, it may still come across as a Habs jersey. Would have been better if a square block were put over the jersey.

There's another key problem for Basha apart from trade-mark infringement and passing off (which relates to the unauthorized use of a third party mark in business): copyright infringement.

You can't reproduce a copyrighted work without the permission of the copyright owner. As well, you can't reproduce a substantial part of the copyrighted work such that it is readily identifiable as that work. In copyright law, a "work" just refers to what is protected, like an image or a song.

So for the banner on the left, Basha has reproduced the Habs logo. Can't do that. As far as the banner on the right, the Habs could try and claim copyright in the design.

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