UPDATED Well, if you ask *me* - The ITQ Advice Column (Trademark Woes Edition) - Macleans.ca
 

UPDATED Well, if you ask *me* – The ITQ Advice Column (Trademark Woes Edition)


 

Oh, for heaven’s sake:

Liberals ‘Green shift’ brand hits a snag
BILL CURRY
From Tuesday’s Globe and Mail
June 23, 2008 at 7:53 PM EDT

OTTAWA — Stéphane Dion’s cross-country tour promoting his “green shift” hit a potentially embarrassing pothole Monday as a Toronto environmentalist took legal action over what she describes as “blatantly unethical” trademark infringement.

A firm already operating as Green Shift sent a cease and desist letter Monday afternoon to the Liberal Party and the company is considering whether to sue for damages.

[…]

There were no apologies from Liberals Monday, who noted the party had secured the rights to the domain name www.thegreenshift.ca: a slick-looking website that allows visitors to calculate how Mr. Dion’s plan to reduce greenhouse gases will affect their family finances. Ms. Wright’s website is www.greenshift.ca.

“What they’re doing is so blatantly unethical,” Ms. Wright said.

More from Canadian Press:

Environmental consultant Jennifer Wright, who has owned Green Shift since 1999 and registered the company name in 2001, said Monday she and a handful of other dedicated environmentalists who work with the firm can’t afford to have its identity associated with any political party.

But efforts that began last week, when Dion unveiled the Liberal party’s so-called Green Shift, have yielded no results. Wright said legal action may be the only recourse.

“We’re just trying to ask them politely to do the right thing,” she said in an interview. “We have asked them to stop using the name and we’ve asked them for a full public apology.”

A Liberal spokesman confirmed the party knew of the Green Shift company before Dion’s announcement, saying someone contacted Green Shift before Dion announced the scheme last week.

“A courtesy call was made last Monday in advance of (the) launch to let them know they might get increased traffic,” said Mark Dunn, Dion’s communications director.

Wright, however, said the call came on Wednesday and it was unclear exactly what the Liberal representative who called intended by the conversation.

[…]

A Liberal spokesman discounted the company’s protests that the Liberals mimicked Green Shift’s web domain name, by adding the article “the” before Greenshift.ca.

“We rightly own the domain name,” said Dunn. “We are not a commercial threat to the company. The content of our site is about policy, not products.”

Here’s the thing: I suspect that the Liberal Party is legally in the clear on this one.

Five minutes with Google confirms that the term ‘green shift’ did not, in fact, originate with the company in question. In fact, it has appeared in many other contexts before now, apparently without objection: as the name of an environmental pilot program out of Perth, Ontario(supported by the federal government, no less); there is also a Manchester-based public private “Green Shift” taskforce dedicated to making the production, use and disposal of computers more environmentally friendly, and at least two books that use the phrase in their respective titles – one on developing a “green sensibility” in architecture, and the other on environmental public policy.

Also, as Mark Dunn points out, the Liberals site “is about policy, not products” – it’s hard to see how you could really mistake a political party platform for a company that sells biodegradable coffee cups, and even if you did, it’s not like you wouldn’t quickly realize your mistake if you actually wanted to buy said coffee cups, what with the distinct lack of a coffee cup order form on the Liberal website.

All in all, I’d say there is very little chance that potential or existing Green Shift clients will be confused, or mistake the for-profit Green Shift site for a subsidiary of a federal political party, particularly now that the Liberals have put a disclaimer on the front page of the party’s site.

All that being said, however — c’mon, guys. Y’all have to realize that the optics here are just awful.

Unless there’s a whole backstory here that has yet to come out — which is possible, I guess; I’m a little puzzled by the inconsistency over which day Wright was called, as well as what was actually said by both parties — anyway, unless somehow, we’re missing a crucial bit of information, it really seems as though you should have taken Wright’s concerns – which are, if perhaps overly cautious, entirely legitimate – seriously, and worked out some sort of solution before launching the site. Given the incorrigibly inquisitive nature of the blogosphere – especially amongst partisans and politics nerds –  it wasn’t a question of whether this apparent case of name collision would come up, but when. (To be honest, I’m surprised it took this long.)  You may be on solid ground as far as trademark law — although I’d love to hear thoughts on that from any amateur or professional law-talking guys out there — but would it have been so difficult to work with this company, rather than spring this just a few days before the launch?

On the plus side, though, I suspect that it is still possible to broker a peaceful end to this standoff without either side being forced to call in the lawyers. For the Liberals, that means apologizing, and then working from there; for Wright – well, I’d say accepting that apology would be the classy thing to do. Then, y’all can figure out some way to make everyone happy without spending thousands of dollars on legal fees, or being forced to reprint thousands of posters, hats and t-shirts. Really, how would either of those outcomes do anything to protect the environment? Isn’t that, ultimately, what both sides want to do?

UPDATE – This National Post story on the dispute includes the following comment, from an actual trademark lawyer, which seems to back up the theory that this may not be a case of actionable infringement:

George A. Wowk, an intellectual and copyright lawyer at Calgary firm Burnet, Duckworth & Palmer LLP said that the fact that Ms. Wright has applied for a trademark, though it is pending approval, still affords her some protection.

But in order to succeed in making a case for infringement, Ms. Wright will have to demonstrate that the Liberals’ use of the term “Green Shift” leads people to mistake or misunderstand the relationship between the organization, Green Shift Inc., and the Liberals’ Green Shift platform.

“In the marketplace now, we have Apple computers, Apple Auto Glass, Apple Records and all those sorts of things, and generally they can coexist in the marketplace without confusion,” Mr. Wowk said. “The basis of trademark law is confusion, so [the central issue will be] whether or not there’s confusion in the marketplace.”

The court may also consider the fact that Mr. Dion’s Green Shift program is a political, rather than commercial, interest, he added.

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UPDATED Well, if you ask *me* – The ITQ Advice Column (Trademark Woes Edition)

  1. They should have gone with “War on Carbon” anyways. Its got a proven track record and a step back from picking fights with an abstract noun.

  2. missing verb alert. you might need one of these…

    “is”

    sorry about that, chief.

  3. As a carbon-based life form, I find your use of that particular phrase to be discriminatory, oppressive and a clear attempt at intimidation. What about Green 2.0? Wait, no, that would result in being beaten to a pulp by enraged techies who have already had it with the whole Two Oh catchphrase.

  4. Green Shift is not (yet) a registered trademark according to the database. The application for trademark at cipo.gc.ca doesn’t include “political slogan” as a registered use. In any event, it seems unlikely that the party is trying to “pass off” its environment policy on the reputation of an unregistered trademark for coffee cups, urinal blocks and toilet paper. They do claim the service of the “analysis of … green shift slogans”, but whether this would limit the ability of anyone to use the term in the political realm seems unlikely…surely that would require–say–competition in that service, one would think?

  5. you’ve got a point about the lifeform thing.

    Green ShiPt. maybe? doesn’t make much sense but at least they way could could clear things up with a couple miles worth of felt markers.

  6. you can copyright some else’s book title like that?

    go figure.

  7. I’ll admit I spent more than five minutes on Google trying to determine the origin of ‘green shift’ in an environmental context. I won’t bore you all with a detailed recap of my findings, since y’all are just as capable as me of playing with the search operators, but it seems to have been a naturally occurring – organic, if you will – coinage; an offshoot of that other wildly overused catchphrase ‘paradigm shift’. None of which, however, means that it makes good political sense to pointlessly antagonize the company that was already using the name.

  8. They can have Green Side Up if they want.

  9. “None of which, however, means that it makes good political sense to pointlessly antagonize the company that was already using the name.”

    oh come on. Its a cheap way to get it to stick in people’s heads. The site’s only been registered since two Mondays ago but that’s still plenty of time to figure out the odds of actually getting stifled by the courts.

    When they realized they needed a “the” some of them probably thought “bonus”.

  10. green eggs and ham is taken

  11. I always thought “the sky’s the limit” would have been cheeky but they managed to mess that one up, too.

  12. Man, that would be so awesome, if not for being the punchline to that joke about [insert ethnic minority]workers laying sod next door.

  13. Garth Turner suggested earlier (on or about june 16) in a response to a comment on his blog that “it” had been taken care of.

  14. See, that’s why I think there may have been a major misunderstanding here, because I very much doubt that the Liberals would have blithely proceeded to launch the site without so much as a second thought towards the *other* Green Shift if they believed that the owner was sufficiently irate as to be considering legal action. They’re not *idiots*, and this was hardly a spur of the moment announcement, unlike certain other parties that have run afoul of copyright law when releasing hastily assembled ad campaigns that never actually ran anywhere. *cough*O’Jays*cough*. Anyway, I just have trouble seeing this as a nefarious plot by the Liberals to willfully disregard the concerns of a tiny environmentally friendly company. I mean, honestly, what would be the point? It seems like an honest disagreement over the use of a phrase that seems very close to being generic.

  15. Liberal Green Plan Version 6.0 might have been a better and more accurate name (We really do mean it this time!).

    Maclean’s wrongly reports this past week that Dion was environment minister under Chretien. Not the case. If that was the case, this would be version 7.0.

  16. where Have I seen something like this before?

    Oh, yeah. Here:

    http://www.ecotrust.ca/statement-government-canada-clarifies-ecotrust-name-matter

    Statement – Government of Canada Clarifies Ecotrust Name Matter
    Posted April 13th, 2007
    OTTAWA, April 13, 2007 /CNW Telbec/ – The Honourable John Baird, Minister of the Environment, today apologized to Ecotrust Canada for any inconvenience that may have ensued since the launch of the $1.5 billion Canada ecoTrust for Clean Air and Climate Change.
    After we launched the initiative, it came to our attention that this non-profit organization was already using the name “EcoTrust Canada”. To avoid any possibility of confusion, we have agreed to stop using this name.

  17. Sharing a name is nothing compared to the case of Olympic Pizza here in Vancouver. The Winter Olympians want this greek restaurant to change names until after 2010. Now thats copyright power.

    Kady, how do I get a job advising parties not to base thier campaigns on words that rhyme with shit?

  18. I imagine an important early step in getting a job as a rhyme advisor is demonstrating an understanding of what the word “rhyme” means.

  19. Man the shift really hit the fan today! right folks! ha ha ha… arg, blah, sigh…

    I have a feeling this summer is going to be mighty strange.

  20. Deb — do you have proof of that? I’m not asking in a snarky way — I had exactly the same thought last night, while trying (unsuccessfully) to get to sleep: WHY would random people start flooding a company with phone calls just because of a name collision?

    I mean, were these existing customers that were suddenly unsure whether they had been inadvertently dealing with a political entity? Or were these ostensibly ordinary people, with no previous awareness of Green Shift Inc., who were suddenly so filled with confusion that, rather than simply read the website — which is where they would have landed, presumably, while searching for information on the Liberal Green Shift — they would go to the trouble to make an irate phone call? It just doesn’t make any sense — unless, that is, there was a covert campaign to besiege the company with calls in order to freak out the owner, and escalate the situation to the next level.

    I’m going to see what I can dig up, but if you have any examples of posts – or comments, or anything else – exhorting people to call up Green Shift and rant about a supposed connection to the Liberals, please post them here, or send them along.

  21. Oh! They could rename it “Green Eggs and Ham!” I love that book!

  22. An electric car in every garage and two green chickens in every pot.

  23. Kady, this guy called:

    http://splatto.net/blog/?p=852

    …and a couple of Libbloggers called.

    I’m sure they were inundated with calls from others. SDA can mobilize dozens of wingnuts that way.

    On another topic, Couillard was a stripper.

  24. And might have run a house of ill repute! Two houses, even! Oh, Julie. If you didn’t have to exist, we wouldn’t have the nerve to invent you.

    I’d like to know when the calls started – was it just yesterday morning, after the story first appeared in bloglandia? I noticed that the blogger who first posted on the possible trademark issue – Crux of the Matter, I think – mentioned that she was tipped off by a “regular reader,” which makes me wonder if this was making the rounds for a couple of days before somebody finally bit.

  25. Or he got fed by someone with formal connections to the Tory party. Just as likely (our side gets some of those as well these days, which means we’re catching up).

  26. Also, I have to wonder why she – Ms. Wright, that is – didn’t put up a disclaimer on *her* site as soon as she realized what was going on — wouldn’t that have been a far more effective way to disassociate her company from the Liberal plan? I mean, did she really expect – or, for that matter, want – everyone who accidentally wound up on her site by mistake to call her company up to find out it was somehow connected to a political party? If she was really concerned over the possibility that it could cost her business, you’d think that would have been her first step.

  27. “Getting Things Done” has been trademark registered since last July. Assuming precident is an indicator this whole thing is free advertising for the Liberals.

  28. Mike Duffy made a point of saying last Thursday on his show after the plan was released to be sure to check out THEgreenshift.ca because greenshift.ca was something else.

    Ms. Wright needs to make lemonade with this: everytime someone calls about the Liberal plan, her staff can use the opportunity to talk the caller up and sell some of her products. It’s the most free publicity she will ever reap and well worth exploiting.

  29. I can think of a couple reasons she can be expecting a hefty buy-out offer or two.

  30. Allowing for the conspiracy-theory-mindset that the current gov. seems to have instilled on me, is it even within the realm of possibility that it may have been suggested to Ms. Wright that her firm could possibly benefit from making a flap about this name similarity thing in order to embarrass the Liberals…naw…

  31. that’s what the swarm is for

  32. yeah say what, because cosying up to the Tories would really help them keep their relationship with the Ontario NDP on a good footing. Thanks for playing though.

  33. Actually, it doesn’t seem as though a little strategic cosying up to the Tories, on certain issues, is considered a faux pas in NDP circles. Why, it was only a few weeks ago that Jack Layton was posing for pics with the Conservative Yellow Shirt brigade during the (all too brief) Era of Oily. More likely, I think, is that the company experienced a sudden flood of phone calls after the initial post appeared, and was driven into a panic by what appeared to be a spontaneous outburst of potentially business-damaging confusion. I’m actually putting the final touches on a (sigh) timeline of the outrage, and am hoping that some readers will be able to fill it out a little more once it goes up.

  34. Thesauruses come in handy: Emerald Transformation. Sounds like a Duke Ellington tune from 1958 with a long tenor saxophone solo. “And now, ladies and gentlemen, Paul Gonsalves wants you to know that he, too, loves you madly, with his medley of East Saint Louis Toodle-oo, Diminuendo and Crescendo in Blue, and Emerald Transformation. Paul?”

  35. Why nto scrap the english site, keep the french one and just add a little ‘translate’ button on the top of the page?

  36. “Emerald Transformation”

    nice, if they don’t mind giving up on the Orangeman altogether.

  37. Ms. Wright should quickly ad advertising to her website. I think the Conservatives would buy up her space; they have the money. They can have an Oily the Spot franchise evolving during the summer.

    Oily the Spot
    Oily the Spot II: The Wrath of Baird
    Oily the Spot III: The Search for New Taxes
    Oily the Spot IV: The Over-taxed Voyage Home
    Oily the Spot V: The Final Tax Frontier
    Oily the Spot VI: The Undiscovered Country-wide Tax

  38. …just stating the obvious, but…

    Google “green shift”: 64,300 results
    Google – pages from Canada: “green shift”: 45,500 pages

    It does seem to be a rather popular term.

  39. So let me get this straight. If the Liberals make a mistake like this, they couldn’t possibly be idiots for having done so; in fact, it’s exceedingly difficult to imagine those bright minds running Dion’s shop making such a mess of things.

    Boy, that’s some benefit of the doubt you’re giving a team that just came up with their first idea in about two years. But if that’s how it’s gonna go, it’s good to know for the next time they screw things up.

  40. This would be a level of deliberate, strategic idiocy heretofore unwitnessed in Canadian politics. I mean, greenshift.ca was – still is, actually – the *first hit* for the term ‘green shift’. The party was very much aware of it, according to everyone involved, and contacted the company at least once, and possibly twice, to give them a heads up on the situation. There’s a disclaimer on the Liberal website that, as far as I know, has been there since the launch. More importantly, the phrase “green shift” does appear to be in broad use within an environmental context. It is not exclusive to this company, and it is hardly a term so innovative and unique that it is impossible to argue that it could not have been independently coined by more than one person, group or organization. If you don’t believe me, I invite you to Google “green shift” -liberal -dion, or do a search that cuts off at the beginning of June 2008.

    I agree – and I wrote in my original post – that it was stupid for the party not to make absolutely sure that Green Shift, Inc., wasn’t going to make a very public spectacle after the launch was taken place. The specific manner in which the phrase itself was used, however, seems to be pretty much legit.

  41. “I agree – and I wrote in my original post – that it was stupid for the party not to make absolutely sure that Green Shift, Inc., wasn’t going to make a very public spectacle after the launch was taken place. ”

    but if they were sure it wasn’t really a legal issue (which I don’t think it is) we’re talking a very shrewd set of trade-offs.

    the “ethics” of using the term makes great entertainment for the chattering class (I love this stuff), but in the long run Jennifer won’t get much sympathy from the masses unless she shoots herself in the foot to do it.

  42. Is that really Paul Wells who posts to your blog? I mean, is it someone named Paul Wells…oh never mind. Going Green, How Green was My Valley, I don’t give a damn about a Greenback Dollar, Greensleeves, Green is the Colour (go Roughies), Jolly Green Giants (go Roughies), the grass really is greener on the other side, oh well, I can’t write a ditty for Hockey Night in Canada either.

  43. A little background here might help. I was a flack catcherfor the BC green party in the 90’s. Over that period the term ‘tax shifting’ became a big buzzword in the movement. So the strategy of using tax policy to green the economy has been known as “shifting” for more than a decade. On the one hand it shows that environmentalists and economists are finally waking up to each others concerns while on the other hand it preserves the charming innocence of both groups. How are the Greens reacting to this?

    PS to Mr. Snarkypants. Ok Shift, shit and shaft are a technically half rhymes but I still would have told them not to go there.