The Tragically Hip vs. Mill Street Brewery
“So there's two avenues of passing off. One is that you think something is something else. […] The other way is that a false association has been created such that you think a certain product is affiliated with, or endorsed by, or approved by, an entity when it isn’t.” – Mark Fancourt-Smith
On Episode 13: The Tragically Hip vs. Mill Street Brewery – Alix Stoicheff speaks to Mark Fancourt-Smith about trademark and competition law issues in a recent lawsuit filed by The Tragically Hip against Mill Street Brewing for their use of the name “100th Meridian Organic Amber Lager.”
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Don't have time to listen to the full podcast? Here's what this episode covered:
Why is The Tragically Hip suing Mill Street Brewery? 00:43
Has Mill Street associated themselves with The Tragically Hip? 02:05
What is passing off and what are they saying in relation to this alleged trademark infringement? 03:52
Can a song title actually function as a trademark? 07:03
Who has to be confused or misled for this to be justified as passing off? 12:06
What is the final takeaway from all this? 13:52
Transcript
Alix Stoicheff 00:00
How wide is the scope of IP protection for a hit song? And where is the line between paying tribute to a beloved band and appropriating goodwill to sell unrelated products?
Mark Fancourt-Smith 00:17
Welcome to LawsonInsight. I'm Mark Fancourt-Smith, a litigation partner located in Lawson Lundell is Vancouver office.
Alix Stoicheff 00:23
And I'm Alixandra Stoicheff, a litigation associate located in our Calgary office. Thank you for joining us on LawsonInsight brought to you by Lawson Lundell LLP. This episode is going to be another departure from our usual format. And Mark and I are going to talk about an interesting case that is just getting underway involving…
Mark Fancourt-Smith 00:39
Beer and The Tragically Hip.
Alix Stoicheff 00:42
Very Canadian.
Mark Fancourt-Smith 00:43
Yes. As we said the last time we did a very special episode, one of the joys of hosting a podcast is that you can commandeer it to talk about things that interest you, and this topic was actually one that our producer Christian had alerted us to when the lawsuit was first filed. So thank you, Christian. And given that this episode will go up around the May long weekend, we thought that beer and The Tragically Hip might not actually be the worst things to discuss. So what we're going to talk about today is the lawsuit that's been filed in federal court by The Tragically Hip (The Hip) against Mill Street Brewing (Mill Street) which is now a subsidiary of the multinational InBev, arising from Mill Street Brewing naming its organic amber lager, 100th Meridian lager, as well as the way in which they've marketed it and specifically associating it with The Tragically Hip. There was some commentary in the media around the time that the lawsuit was filed based on the statement of claim but since then, we now have Mill Street statement of defense as well as The Tragically Hip’s replied to that defense, which raise some really interesting trademark issues, competition law issues, and issues as to anticipated evidence. So I should stop here to say, our discussion of this is just based on the pleadings. No evidence has yet been induced, and nothing has been proven or disproven. And so our discussion of this is really just our take on some of the interesting issues that are identified in the pleadings themselves.
Alix Stoicheff 02:05
So Mark, the lawsuit claims that in using the name 100th Meridian Amber Ale and in marketing it the way that it has Mill Street is allegedly liable for passing off for copyright infringement and for breach of the Competition Act. And essentially, the crux of the case is that it's saying that there is it that Mill Street has created a false association between the beer and The Tragically Hip. So let's talk first about how it has been associated, and in particular, the way in which the beer has been promoted, which seems to have driven this lawsuit in terms of social media strategy, and other advertising.
Mark Fancourt-Smith 02:37
Yeah. And again, based on what's been cited in the pleadings, the examples it seems pretty clear that Mill Street wanted to and did capitalize on The Tragically Hip’s popularity and promoting this beer. Particularly in 2016, during The Tragically Hip’s Final Tour, which of course, was a very emotional one given Gord Downie's diagnosis with terminal brain cancer. So around that time, you see posts on Twitter, predominantly, many of which are cited in the proceeding in the pleadings, rather where Mill Street says things like, “Get your 100th Meridian on when The Tragically Hip plays Young & Dundas tonight”, with a picture of the beer or “Mill Street Brew Pub will be showing The Hip show in St. John's done it live and all screens, and $5 pints of 100th Meridian Ale” and so on, or, on the day of the final concert, Mill Street reposted a picture taken by somebody else have a can of 100th meridian ale in front of a collection of a Tragically Hip album, so things like that. So do you hear the plaintiff said, there's little doubt if any, that Mill Street was referencing The Tragically Hip, using their popularity to promote its beer, and they say, unlawfully, and so far it has confused people into thinking that there was an association between the beer and The Tragically Hip when there wasn't.
Alix Stoicheff 03:52
And so that gets into the next part, which is that the trademark angle of this case is interesting. The Tragically Hip in their statement of claim say that not only is their Registered Trademark or their registered trademarks being infringed, but their song title “At The 100th Meridian” is the subject of passing off some of what is passing off and what are they saying in relation to this alleged trademark infringement?
Mark Fancourt-Smith 04:17
Yeah, I guess this is a first point you don't need a registered trademark to have rights in a name or a trade name, you can earn one through use and reputation. There's innumerable examples of people who have not taken the step of registering their business name as a trademark. But nonetheless, the fact that they've used it used it in the market developed a reputation in their, in their name in their goods within a certain geographic area means that they get rights in that name, and they have protections such that someone else cannot come along and start using it or one that's likely to cause confusion. And so when someone does that, that's called passing off and what's been alleged here by The Tragically Hip is that their song title “At the 100th Meridian” has now taken on a role as an unregistered mark, such that naming the beer 100th Meridian Amber Ale is likely to cause confusion. Now, it's interesting because the origins of trademark law including passing off, it was all based in consumer protection. It's about knowing that something was in fact made by someone so that you could rely on it, you could take the medicine, knowing that it's been made by an official manufacturer, so on and so forth. But of course, with the rise of the importance of brands themselves, new avenues of protection are often being sought. You know, the classic example from a number of years ago was Legos, patent rights at in the Lego blocks were running out. And so they sought to actually get trademark protection for the shape of the blocks to prevent rivals like Mega Blocks, and so on from entering the market. So it's always interesting to see how trademark law and passing off is evolving. So there's two avenues of passing off. One is that you think something is something else. So you buy a product, because you were confused, and you thought it was a different product or the genuine article when it wasn't. The other way is that is that a false association has been created such that you think that a certain product is affiliated with or endorsed by or approved by an entity when it isn’t. However, even in those cases, it's you have to have a mark or a name that is the subject of the confusion. And so that's why you see in the pleadings in the in the statement of claim that The Tragically Hip alleged that since the song was released, they have used the mark “At The 100th Meridian”, to sell products in Canada. But the examples they give, interestingly, are downloadable music files, downloadable ring tones, musical products, including a single and album, a remastered album, a compilation, album, and so on and so forth. So what The Tragically Hip have alleged is by the promotion and the continuing use of it in Canada, the song title “At The 100th Meridian” is now actually distinctive of their goods.
Alix Stoicheff 07:03
Right? And I see what they're saying with that. But then, you know, the lawyer me is always thinking about the other side of this. And part of me thinks, okay, so the song is popular, but does the title actually function as a trademark?
Mark Fancourt-Smith 07:14
And that's the key question on this particular point. It's one that the defense has zeroed in on. It's a song title, and can a song title in and of itself function as a trademark as well? And going back to that aspect of the claim: Yes, they've claimed that it has been used to sell songs. Well yes, but to sell the song “At The 100th Meridian”, or to sell videos, yes, the video of “At The 100th Meridian”. And so it's, this, I think, will be one of the most interesting aspects of the case, which is to say, it is an incredibly well known song, it's a beloved song with a lot of goodwill attached to it. But does it also function as signifying the origin of goods? Or can it be extended to that extent? So it'll be really interesting to see how this this particular part plays out, at least for the IP lawyer and me.
Alix Stoicheff 08:01
Right, because they've used it to, you know, sell songs and music videos and things like that, that you're talking about, but they haven't necessarily specifically used it for something like selling beer, The Hip, I mean.
Mark Fancourt-Smith 08:13
No, and that raises another point. There are actually instances where The Tragically Hip’s name has been used by other affiliated companies, like there was a beer called a Tragically Hopped Double IPA, which I'm not aware of, you know, whether there was a dispute. I mean, there's always it could have been something in the in the, you know, that that was just not in the public eye resolve that, who knows. And The Tragically Hip do have a licensing agreement with an Ontario winery. So I think there is Fully Completely Chardonnay and Flamenco Rose. And I can't remember, remember the name of the of the cabernet at the moment. So they are actually licensing their name in, in the field of alcoholic beverages, but it'll be interesting to see how it plays out to see has this song title actually been used in association with goods up a song?
Alix Stoicheff 09:04
Right. And then we've talked a lot so far about The Hip’s approach to this, but one of the defenses that Mill Street has played is that they had other reasons to call the beer, what they did they say that it's a reference to where they sourced the grain and the barley for the beer, and that it's meant to be attributed to farmers.
Mark Fancourt-Smith 09:20
I mean, there's always a couple of ways. Well, there's a number of ways to plead defenses, one of which is to take a purely technical approach and there's a number of technical defenses, which are important. I mean, IP is a very technical area. But they have also put forward the explanation positively to say, we had other reasons for calling it At The 100th Meridian Ale, it is in reference to where we source the materials, it is in tribute to the farmers and other people who do it, which is an interesting allegation. I mean, on the one hand, they didn't call it farmer beard. They called it “At the 100th Meridian”. So this will be one where it'll be interesting to see how the evidence plays out because of course, on assuming this goes to discovery, what were the discussions that were being had at the time this name was thought up? Did they reference the farmers? Or did it reference The Tragically Hip? Or what I mean, we have no idea at the moment. Again, this is just at the pleading stage. But that will be an interesting one to see how that particular defense plays out.
Alix Stoicheff 10:18
Right, yeah. Like I, as I was going through the pleadings, I was thinking, Oh, this would be a very interesting discovery to be a fly on the wall in that room. It will certainly I'm sure, bring up some interesting backstory on both parts. So tell me about the competition law aspect to this, the allegation is that Mill Street has breached the Competition Act by misleading the public and tell us a bit more about what that allegation involves.
Mark Fancourt-Smith 10:45
Yeah, this is another interesting aspect. Of course, most of the Competition Act, creates offenses that are can only be prosecuted by the government by the Competition Bureau. But the misleading advertising one is that private parties can bring as against each other. What that requires under the relevant section is that there has to be a representation that is false or misleading in a material aspect or material respect, and one that's likely to confuse the public. Now, traditionally, when you think about it, that representation rather, is a claim. I mean, there's a classic series of, of cases in BC, between the cellphone providers saying we have the fastest cell network. Okay, well, and the other ones saying, either No, you don't, or that's based on testing, which is out of date, or it was a different technology at the time, and so on. So a concrete representation, which is falsifiable. So here, it'll be interesting to see how it's played out in terms of what they say the actual representation is, do these ads, associating the beer with The Tragically Hip, whether, you know, in front of their albums or by reference to their final tour, do those constitute representations which would be understood under the Act as being misleading and actually making a representation that could be then held up and said, Is this true? Or is this false?
Alix Stoicheff 12:06
On that topic of misleading? Who has to be confused? And how would you show something like that?
Mark Fancourt-Smith 12:12
Yeah, that's always a key question. In these cases, now, the band has said through their counsel, when they were interviewed, actually, in perspective of this case, that, you know, this was done being done to prevent the fans from being misled. And it was to protect the fans. And this case has certainly been pleaded in a way that is that is sort of digestible to the public, but the person who matters for the for confusion is sort of what the courts called a mythical creature or a mythical creation of a consumer who is neither extremely knowledgeable about the products in question, nor what's sometimes referred to, in the case law as a moron in a hurry. And so they have created this hypothetical, reasonable, reasonably informed consumer who the court then has to look at the representation in question, we're also be from a trademark angle, the name and question or the impression in question to side with this hypothetical person be confused. And as for actual confusion, and that's usually done with survey evidence. There's a few people who are who are quite well known as doing these surveys. For cases like this to establish is there actual confusion? Though, certainly in the trademark side, and even in the competition side, actual confusion is not always required. It's is it likely is it reasonably likely to cause confusion, but certainly, again, the pleadings and including the reply, they do plead a lot of evidence, as well as the material facts. And so in the reply that's been filed, a number of examples are given where people were purportedly confused whether when buying the product, they thought that it was affiliated with the hair, or they bought it because they thought it was affiliated with The Tragically Hip.
Alix Stoicheff 13:59
Yeah. And one of the things that struck me when I was going through the pleadings was the question of why now, I mean, there's a lot of references to what happened in 2016, in the pleadings, but it did leave me wondering why this lawsuit is being brought in 2020 or 2021. And I do you have any insight into the timing of this?
Mark Fancourt-Smith 14:15
I don't, it was something which occurred to me as well. And I know that in some of the statements made around when the statement of claim was filed, there was statements from counsel for The Tragically Hip that this was unfortunate that it had come to this that efforts have been made to work this out with Mill Street. Usually in similar cases, they had been able to, but we're not in this case. But certainly in the reply that was just filed with the head of March. The Tragically Hip have claimed that they did not become aware and could not reasonably have become aware of this of the passing off of the alleged actions until 2020. Which is interesting given that what they're complaining about was on social media and it was on social media, some times using a hashtag of The Tragically Hip, whether by Mill Street itself, or a lot of what The Tragically Hip have pointed to was the reactions of people on Twitter to the posts, and a lot of them were tagging The Tragically Hip and so on in that respect. So again, this will be another one where it will be interesting to see how it plays out if the lawsuit does indeed go forward on the discoverability. Were they aware? Should they have been aware? And what were the circumstances under which they were not aware of notwithstanding this was on social media using their band's name and hashtags?
Alix Stoicheff 15:32
Yeah. So Mark, you're wearing a few hats in this. You're a Tragically Hip fan? I think you're a beer fan, I think. And I, I do know, you're an intellectual property law lawyer. So what's your ultimate takeaway from all this?
Mark Fancourt-Smith 15:45
Thank you for not adding the ice think to your intellectual property lawyer. Yeah, I mean, as I said, from the trademark aspect, or the passing off aspect, it'll be really interesting to see how it develops in terms of how wider protection Can you have for a song title when that song is known, beloved, one of your best ones. Had does that extend into trademark protection and how? And you know, secondly, it will be interesting from evidentiary standpoints to see how Mill Street defense as to the origin, the name plant plays out how the discoverability defense plays out to the claim that all these claims are time barred because they're past the limitation periods. And one aspect, which I'm sure we will never really see, as I expected was all but that prejudice was it would be interesting to see what were the discussions? That did not work.
Alix Stoicheff 16:37
Yeah. Well, thanks very much mark for chatting with us today. And hopefully, once the pandemic is over, and it's safe to be getting together for a beer, we can do so on a patio and maybe blasts on The Tragically Hip while we're doing it.
Mark Fancourt-Smith 16:51
Here's hoping!
Alix Stoicheff 16:53
Yeah. All right. Thanks very much for coming on today.
Mark Fancourt-Smith 16:55
Thanks for indulging me.
Alix Stoicheff 16:57
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