Michelin v. Caw, docket T-825-94

     T-825-94

BETWEEN:

             COMPAGNIE GÉNÉRALE DES ÉTABLISSEMENTS

             MICHELIN - MICHELIN & CIE

     Plaintiff

AND:

             NATIONAL AUTOMOBILE, AEROSPACE,

             TRANSPORTATION AND GENERAL WORKERS UNION

             OF CANADA (CAW - CANADA)

             and

             BASIL HARGROVE

             and

             LARRY WARK

     Defendants

     REASONS FOR JUDGMENT

TEITELBAUM, J:

FACTS:

     This is an action for infringement of trademarks and copyrights with intriguing constitutional dimensions. The Plaintiff Compagnie Générale des Établissements Michelin - Michelin & Cie. [hereinafter "CGEM Michelin"] is a French corporation with worldwide interests in the manufacture, distribution and sale of tires and automotive accessories. CGEM Michelin also provides tourism services, including the production of tourist guides and maps.

     In February and March 1994, the Defendant, National Automobile, Aerospace, Transportation and General Workers Union of Canada [hereinafter "CAW"] attempted to unionize the employees of Michelin North America (Canada) (hereinafter "Michelin Canada"), the wholly owned Canadian subsidiary of CGEM Michelin, at Michelin Canada's three tire plants in Granton, Waterville and Bridgewater, Nova Scotia. Defendant Larry Wark is the local CAW representative responsible for the Nova Scotia organizing campaign. Defendant Basil Hargrove is the National President of the CAW who approved the launching of the campaign. During the campaign, the CAW distributed leaflets, displayed posters and issued information sheets that reproduced the term "MICHELIN". The CAW also used in its campaign material CGEM Michelin's corporate logo, the Michelin Tire Man or "Bibendum" design, a drawing of a beaming marshmallow-like rotund figure composed of tires.

     The Plaintiff CGEM Michelin holds trademarks and copyrights in the term "MICHELIN" and the "Bibendum" design. The Defendants did not obtain the permission of CGEM Michelin before they used the Plaintiff's intellectual property. The Plaintiff is now seeking damages on the grounds that its intellectual property rights were violated by the Defendants. The Plaintiff also wants a permanent injunction to restrain the Defendants from using its trademarks and copyrights in future organizing drives. The Defendants counter that they did not infringe the trademarks and copyrights of the Plaintiff. In addition to denying the charges of infringement, the Defendants offer a constitutional defence. They submit that if Section 3 and Section 27 of the Copyright Act, R.S.C. 1985, c. C-42 [hereinafter the "Copyright Act"] and Section 20 and Section 22 of the Trade-marks Act, R.S.C. 1985, c.T-13 [hereinafter the Trade-marks Act] prohibit them from using the Plaintiff's trademarks and copyrights in a union organizing campaign, then those sections of the respective Acts are unconstitutional restrictions on their freedom of expression guaranteed in Section 2(b) of the Canadian Charter of Rights and Freedoms.

     I propose to first briefly outline the Plaintiff's intellectual property rights before describing in detail the Defendant CAW's organizing literature that is at issue. I will then consider the grounds for infringement under the Trade-marks Act and the Copyright Act before addressing the constitutional question.

     Intellectual Property Rights

     Since the Defendants admit in paragraphs 7 to 20 inclusive of the Statement of Admissions filed herein, the validity of the various trademarks and copyrights at issue, their status is not in dispute. The Defendants also recognize that CGEM Michelin has used its "Bibendum" designs in Canada and around the world as trademarks in connection with its business services and products. The Defendants also acknowledge that CGEM Michelin has licensed its subsidiary, Michelin Canada, to use its various trademarks and copyrights.

     Trademarks and Copyrights

     CGEM Michelin is the registered owner of two trademarks for variations of its "Bibendum" or the Michelin Tire Man logo. These trademarks are included in Appendix 1. Both trademarks depict "Bibendum" in a running motion, his hand raised in greeting.¹ In addition, CGEM Michelin holds a trademark for the term "MICHELIN".² CGEM Michelin also holds three copyrights registered in 1982 in the "Bibendum" design. These copyrights are also included in Appendix 1. They respectively depict a right-handed and running "Bibendum", "Bibendum" clutching a tire in his left hand and most elaborately, a stationary and top-hatted "Bibendum" with a tire clenched in both hands and a garland of stars at his feet. CGEM Michelin also claims an unregistered copyright in the depiction of a heavy-booted "Bibendum" with crossed arms.

     Since the content and purposes of the alleged acts of infringement go to the heart of this case, I will now describe the Defendants' relevant documents in some detail.

     The Leaflets and Poster

     As I stated briefly above, the Defendant CAW conducted an organizing campaign at Michelin Canada's plants in Nova Scotia in February and March 1994. The Defendant CAW distributed 2500 leaflets to Michelin workers outside the factory gates at the three Nova Scotia Michelin Canada plants. The leaflet (Exhibit P-18) is included as Appendix II to this decision. The top right hand corner of the leaflet displays the CAW logo, a mark with the letters "CAW" and "TCA" separated by a stratified maple leaf and the word "CANADA" underneath a thinly drawn line. The contentious portion of the leaflet depicts a broadly smiling "Bibendum", arms crossed, with his foot raised, seemingly ready to crush underfoot an unsuspecting Michelin worker. In the same leaflet, another worker safely out of the reach of "Bibendum's" looming foot has raised a finger of warning and informs his blithe colleague, "Bob, you better move before he squashes you". Bob, the worker in imminent danger of "Bibendum's" boot has apparently resisted the blandishments of the union since a caption coming from his mouth reads, "Naw, I'm going to wait and see what happens". Below the roughly drawn figures of the workers is the following plea in bold letters, "Don't wait until it's too late! Because the job you save may be your own. Sign today for a better tomorrow." The leaflet also gives the phone number for the CAW office in Granton. Defendant Wark, the Defendant CAW's organizer for Nova Scotia, admitted that he had photocopied and prepared the leaflet with the offending "Bibendum" figure in the CAW office.

     The leaflet was also reproduced as a poster and displayed on the windows of CAW Offices' in Granton, Waterville and Bridgewater. After counsel for Michelin Canada sent the Defendant Hargrove a letter in March 1994 asserting intellectual property rights in the "Bibendum" figure, the poster was removed from the Defendant CAW's Waterville and Bridgewater offices. However, the poster in the Defendant CAW's Granton office remained visible to passers-by until June 1994.

     The Information Bulletins

     During the same unionization drive, the Defendant CAW distributed an information bulletin entitled "Sick and Accident vs. Compensation". The subject matter of the bulletin is not at issue in the present case. Put simply, the bulletin attempts to persuade Michelin workers that company policies and attitudes on claiming for work-related injuries have cost workers financially in the short and long-term. More importantly for the purposes of the present dispute, the bulletin displays the word "MICHELIN" in conjunction with part of the CAW logo. In the top left hand corner of the bulletin, the letters "CAW" and "TCA" are separated by a maple leaf. However, the word "MICHELIN" appears underneath a line drawn below the CAW acronym and maple leaf design (Exhibit P-21).

     A second information brochure contrasts the discretionary company policies of a non-unionized environment with the binding rights of an unionized labour force. On the cover page of the brochure, at the top of the page, appears the word "MICHELIN" with a thinly drawn line separating it from the bold and oversized phrase, "Some Facts". At the bottom of the same cover sheet is the CAW logo, composed of the letters "CAW" and "TCA" separated by a maple leaf with the word "CANADA" underneath a thin line (Exhibit P-27).

     The Plaintiff also submitted into evidence a bundle of the Defendants' campaign documents to which it makes no objection (Exhibit P-26). This "innocuous" material from an intellectual property standpoint did not depict the "Bibendum" but the word "MICHELIN" is employed throughout. For example, some of these documents bear the title, "To all Michelin workers at Granton" while others refer in the generic sense to "Michelin workers" or depict a mock meeting of Michelin management with the chairperson inciting, "My Fellow Michelgonians". The bundle also contains cartoons contrasting the conditions of unionized workers with their non-unionized brethren. One of the workers is called "Bob" - perhaps the same "Bob" at risk from the menace of "Bibendum's" boot in the leaflet described above. However, in this instance "Bibendum" 's mighty presence is missing from the cartoon.

     During the initial organizing campaign, enough union cards were signed to allow the Defendant CAW to apply for certification as bargaining agent for a unit of employees pursuant to Section 23 of the Nova Scotia Trade Union Act, R.S.N.S. 1989, c. 475. The Defendants were ultimately unsuccessful in their efforts to unionize the workers at Michelin Canada's three plants in Nova Scotia. The Nova Scotia Labour Relations Board dismissed the CAW's application for certification as a majority of employees in the bargaining unit did not vote in favour of the union.

     The Defendant CAW had also tried unsuccessfully in 1986 and 1991 to unionize Michelin Canada's workers in the Nova Scotia plants. During those earlier campaigns, the Defendants had also depicted CGEM Michelin's trademarks and copyrights in its campaign literature. Michelin Canada had also written letters to the Defendant CAW and its then president to assert that its intellectual property rights in the "Bibendum" design had been violated. However, the Plaintiff CGEM Michelin did not seek vindication of those rights against the Defendants in a Court of Law until the current action.

ISSUES:

     The issues in this case force the Court to go beyond the straightforward question of whether the Defendants infringed the Plaintiff's trademarks and copyrights. Even the grounds of infringement under the Trade-marks Act and Copyright Act are not so clear cut in this instance. Both parties have urged the Court to consider novel interpretations of the law. On the trademark issue, the Plaintiff argued that it did not have to prove that the Defendant CAW had "used" its trademarks as the term "use" has generally been understood and interpreted in the case law. On the copyright issue, the Defendant argued for an expanded and quite unprecedented notion of parody under Canadian copyright law. Finally, there was the weighty issue of whether the respective provisions of the Acts are constitutionally valid or unwarranted restrictions on freedom of speech. One final element of complexity was that throughout discussion of the trademark, copyright and constitutional issues, the particular fact of the Defendant CAW's status as a trade union depicting trademarks and copyrights during the course of an unionization campaign generated much thought and debate. I have integrated, where necessary and appropriate, the substance of the parties' arguments and my conclusions on the difficult subject of the union's status.

I. The Trademark Issues

     The larger issue before the Court was whether the Defendant CAW infringed the Plaintiff's trademarks when it depicted the "Bibendum" design and term "MICHELIN" on its unionization leaflets and information bulletins. The more narrow but crucial question during the pleadings became the current status and validity of the holding in Clairol International Corporation v. Thomas Supply & Equipment Co. Ltd., et al. (1968), 38 Fox Pat. C. 176 [hereinafter "Clairol"], the leading case on the meaning of the term "use" under the Trade-marks Act. The Plaintiff had originally pleaded Sections 19, 20, 22 and Subsection 7(b) of the Trade-marks Act. During the course of oral argument, however, the Plaintiff confined its arguments to Section 20 and Section 22.

     In reference to both Sections 20 and 22 of the Trade-marks Act, I will state from the outset that I have declined the Plaintiff's invitation to overrule and rewrite Clairol. I agree with the Defendants' submission that the classic interpretation of "use" first elucidated in Clairol for Section 20 and Section 22 is still the law.

     (i)The Clairol Decision

     In the Clairol case, the plaintiff Clairol owned trademarks for hair dye colours and a hair tinting process. The defendants depicted Clairol's hair dye trademarks on the packages of their own hair solutions in a chart comparing hair colours. The same colour comparison chart was printed on separate advertising brochures. Clairol sued for trademark infringement under Sections 19 and 22 of the Trade-marks Act³.

Section 19 reads:

         RIGHTS CONFERRED BY REGISTRATION.

19.Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.

Section 20 reads:

         INFRINGEMENT

20.The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name, but no registration of a trade-mark prevents a person from making

(a)any bona fide use of his personal name as a trade-name,      or

             (b)any bona fide use, other than as a trade-mark,

                 (i) of the geographical name of his place of business, or

                 (ii)of any accurate description of the character or quality of his                          wares or services,

in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark.4

Section 22 reads:

22. (1)No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.

         (2) In any action in respect of a use of a trade-mark contrary

to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell wares marked with the trade-mark that were in his possession or under his control at the time notice was given to him that the owner of the registered trade-mark complained of the use of the trade-mark.

     Section 19 speaks to the owner's right to the exclusive use of a trademark after it has been registered. In scope, Section 19 has been limited to cases in which the infringer uses a mark identical to the registered trademark for the same wares or services as the registered mark: (see Canadian Council of Blue Cross Plans et al. v. Blue Cross Beauty Products Inc. et al (1971), 3 C.P.R. (2d) 223 (F.C.T.D) [hereinafter "Blue Cross"] at page 231). Section 20, the ground of infringement pleaded in the current case, focuses on when the exclusive right established in Section 19 has been infringed in instances of the use of a confusing trademark. Section 20 therefore expands the scope of Section 19 to cover cases of infringement in which the infringer has not used a mark identical to the registered mark. Section 20 was not explicitly argued in Clairol, but Justice Thurlow's ruling on the meaning of "use" under Section 19 also encompasses how "use" is to be understood in relation to Section 20 since both Section 19 and Section 20 focus on the scope of the registered owner's rights. Section 22 also addresses infringement, but it is not in explicit reference to the owner's right of exclusive use. Rather, the emphasis in Section 22 is on the infringer's own use in a manner likely to depreciate the goodwill associated with the mark.

    

     (ii)The Two Components of Use under Section 19 and Section 20

     Justice Thurlow (as he then was) in Clairol, supra, at page 192 held that under Section 19, the party with the right of exclusive use who alleges infringement of that right has to first prove that the infringer used the trademark as the term "trademark" and the verb "use" are understood under Sections 2 and 4 of the Trade-marks Act.

When therefore section 19 provides that the registration of a trade mark in respect of any wares or services gives to the owner "the exclusive right to the use of such trade mark throughout Canada in respect of such wares or services" what it appears to me to confer is the exclusive right to the use of such mark in association with such wares or services (within the meaning of sections 2(v) and 4) for the purpose of the trade mark or of a defined standard from others. A use of the mark, in association with wares or services, within the meaning of sections 2(v) and 4, that is not "for the purpose of distinguishing or so as to distinguish" the particular wares or services from others is not, however, as I see it within the area of the exclusive right conferred by section 19.

     Section 2 offers definitions of certain terms employed throughout the Trade-marks Act. The most crucial for the current case are the definitions of "trademark" and "use". The purpose behind the use of a trademark is key to the definition of a trademark.

Trade-mark means:

(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.

     To qualify as "use as a trademark", therefore, the mark must be used for the purpose of identifying or pinpointing the source of the goods and services. In other words, to use a mark as a trademark, the person who used the mark on the goods or in connection with the services must have intended the marks to indicate the origin of the goods or services.

    

     The term "use" in Section 2 is defined specifically in relation to a trademark to mean "any use that by section 4 is deemed to be a use in association with wares or services".

     Section 4 reads:

4.(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

         In effect, Section 4 states that to "use" a trademark for both wares and services, the first element of proof is that the infringing party used the mark "in association" or in connection with its own wares or services. Section 4 offers different criteria for determining the association for wares and services. The term "services" is not defined in Section 2 but wares are defined to include "printed publications". For wares, under Section 4(1), there are seemingly more strenuous elements of proof for "use in association". They are that: (1) the infringer transferred or possessed the property with the owner's marks in the normal course of trade (my emphasis) and (2) that notice of the association was given to the person receiving the wares either through the presence of the plaintiff's mark on the goods themselves, the packaging, or being in some other manner associated with the wares. For services, the association with the plaintiff's mark is seemingly done in a more straightforward fashion since it is sufficient under Section 4(2) to prove "use" of the trademark if it is (1) used or displayed in; (2) the performance or advertising of the services.

     I am satisfied that the classic Clairol analysis of use under Section 20 is still good law. The test for "use" in Section 20 requires two separate elements of proof from both Section 2 and Section 4. In effect, the first element taken from Section 4 is: (1) did the Defendants associate their services with the Plaintiff's trademarks? The second element from Section 2 is: (2) did the Defendants use the mark as a trademark for the purpose of distinguishing or identifying the Defendants' services in connection with the Plaintiff's wares or services?

     Justice Thurlow applied this two-pronged test to the facts in Clairol at pages 190-194. He held at page 190 that the mere presence of the plaintiff''s marks on the defendants' hair dye packages was sufficient to constitute a "use" of the trademarks in association with the defendant's wares.

Pausing here it is I think apparent that the presence of the plaintiff's marks on the defendants' packages is a use of those marks "in association with" the wares in the defendants' packages within the meaning of section 4(1) because, and as I see it, simply because it is marked on the packages.

And yet, there was no ultimate finding of infringement for the packages under Section 19 since Justice Thurlow also determined at page 194 that the trademarks were not used as trademarks for the purpose of identifying the infringer's wares with the plaintiff's trademarks:

It is, I think, abundantly clear from looking at the packages that the marks, Miss Clairol and Hair Color Bath, are not intended to indicate and do not indicate to anyone that the contents of the package are the defendants' goods. Nor do I think it likely that any prospective purchaser of a package of these wares would be likely to be deceived by the presence of the marks, Miss Clairol and Hair Colour Bath as they appear on the package, into thinking they were intended to indicate the origin of the goods in the package.

     As for the advertising brochures under Section 19, Justice Thurlow ruled that there had been no "use in association" with the marks. Since the brochures were not the wares of the defendants themselves, there was no means of giving notice of the association to the persons receiving the wares: (Clairol, supra at page 191). This lack of "use in association" with the brochures lead Justice Thurlow to conclude that there had actually been no "use" at all of the trademarks in relation to the advertising brochures. Because there had been no "use in association", the first component of "use" under the Section 4 criteria, Justice Thurlow did not analyze whether the marks on the advertising brochures had been "used as trademarks", the second component of "use" under Section 19. The plaintiffs in Clairol therefore failed to satisfy the criteria for use of a trademark under Section 19 for both the packages and the advertising brochures.

     The Plaintiff argued against the decision in Clairol by highlighting the fact that Section 20 makes no explicit reference to the infringer's "use" of the registered trademark. According to the Plaintiff, the key to Section 20 is the presumption that the registered owner's exclusive right is infringed in instances of the selling, distribution or advertising of wares or services in association with a confusing trademark. The Plaintiff submitted that in the present case, Section 20 does not require proof of use. In effect, the Plaintiff denied the validity of Justice Thurlow's ruling that there is an implicit but crucial additional requirement under Section 20 to first prove "use" by the Defendants of the Plaintiff's trademarks. With respect, I cannot agree with the Plaintiff's contention that its novel interpretation should triumph over the holding in Clairol simply because it obviates the need for any reference to "use" and thereby avoids the two required elements of proof under Section 20. Much as we might wish to sometimes do away with the more complicated aspects of the term "use", this seemingly straightforward term has been qualified and given a particular meaning by the framers of the Trade-marks Act and the jurisprudence. In Clairol, at page 195, Justice Thurlow was conscious of the need to craft a test for use that would not encompass certain "common instances of the use of trade marks in the course of trading" such as comparative advertisements like the colour comparison charts in Clairol. If we imagine for an instant that the statutory definitions of "use" as interpreted by Clairol is a net to capture acts of infringement, the merit of Justice Thurlow's approach is apparent. The net or meaning of "use" is designed so that not all users of trademarks belonging to another person are caught within the threads of the infringement provisions.

     Counsel for the Plaintiff also raised the spectre of ostensible redundancies within the Trade-marks Act to support its claim that there is no need to prove "use" under Section 20. The Plaintiff argued that since Section 19 and Section 22 of the Trade-marks Act already require proof of "use" within the meaning of Section 4, Section 20 must exist to cover cases of an infringer who does not "use" a trademark but merely "advertises" its wares or services in association with a confusing trademark. However, in making this submission, the Plaintiff was also forced into the untenable position of arguing that when the Defendants ostensibly "advertised" their services by depicting CGEM Michelin's trademarks, they made these unlawful advertisements without actually stooping to "use" the trademarks. I can see no logic or merit to such a strained construction since Section 4(2) details how use in respect of services is deemed to be made if the mark is used in the performance or advertising (my emphasis) of the services.

     (iii) The Single Component of Use under Section 22

     If I were to reject the Plaintiff's novel submission on the proper interpretation of Section 20, which I have done, the Plaintiff argued in the alternative that the explicit reference to "use" in Section 22 should be expanded beyond Justice Thurlow's holding in Clairol. In Clairol, Justice Thurlow arrived at a slightly different characterization of the elements of proof for use under Section 22. In contrast to Section 19, he held at pages 195-196 that Section 22 only requires proof of "use in association with wares or services" under the specific Section 4 criteria.

Rather I think the verb "use" in section 22 is to be interpreted by reference to the definition of the noun "use" in section 2(v) the effect of which is to confine the application, and therefore the prohibition, of section 22 to a use which any person may make, in association with goods or services within the meaning of sections (sic) of section 4 of another's registered trade mark in such a manner as to depreciate the value of the goodwill attaching thereto.

There is no need under Section 22 to prove the additional element of proof of use of the mark as a trademark for the purpose of distinguishing wares or services. The plaintiffs in Clairol were successful in citing Section 22 as a ground of infringement for use of their trademarks on the defendants' packages since Section 22 does not require proof of use of the trademarks as trademarks for the purpose of distinguishing goods and services.

     The Plaintiff argued that for Section 22 to make sense within the infringement provisions of the Trade-marks Act, it must address cases such as the present. According to the Plaintiff, although the Defendants' activities do not strictly constitute "use" of the trademarks in association with wares and services, these activities are still likely to depreciate the goodwill of the Plaintiff's marks. I was urged to temper the explicit reference to "use" in Section 22 and go beyond the rigorous Section 4 criteria for "use in association with wares and services" in order that activities likely to depreciate the goodwill of a trademark did not escape censure. I do not accept the Plaintiff's argument that interpreting "use" under Section 22 requires any deviation from the basic definition of "use in association with wares or services". The Plaintiff also argued that the Section 4 criteria should only apply when "use" is deployed as a verb in the Trade-marks Act. I also reject the Plaintiff's grammatical point that the noun form of "use" was deployed in Section 22. More importantly, the grammatical form of the term "use" in any particular instance in the Trade-marks Act is irrelevant for the purposes of interpreting the meaning and application of "use".

     The Plaintiff's novel interpretation of Section 22 is not required to redress redundancies or shortcomings in the grounds of trademark infringement. "Use" is the foundation for Section 19, Section 20 and Section 22 as grounds of infringement but the secondary elements for each ground once the primary "use" has been established are quite different. Section 19 requires use of the identical mark for identical wares and services while Section 20 states that the mark need only be "confusing" and not identical to the registered mark. Section 22 is even more open-ended since the mark need not even be confusing as long as its use is likely to depreciate the value of the goodwill: (see Mr. Submarine Ltd. v. Amandista Investments Ltd.(1987), 19 C.P.R. (3d) 3 (F.C.A.) at page 8). The grounds for infringement move from their narrowest in Section 19 to their most expansive in Section 22 but "use" remains the basic building block or linchpin for all of the grounds.

     (iv) Clairol's Status in the Jurisprudence

     I agree with the Defendants' submission that Justice Thurlow's reasons in Clairol, (supra), remain binding authority on the need and means of proving "use" under Section 20 and Section 22 of the Trade-marks Act. The Plaintiff failed to convince the Court that its unprecedented analysis of the grounds of infringement was necessary to redress existing inconsistencies within the law. The Plaintiff also failed to cite any substantive case law or judicial authorities that cast serious doubt on the merit of the Clairol decision. The Plaintiff did make a passing reference to Justice Reed's decision in Eye Masters Ltd. v. Ross King Holdings Ltd. (1992), 44 C. P. R. (3d) 459 [hereinafter "Eye Masters"]. However, on greater scrutiny, Eye Masters adds little or nothing to the persuasive force of the Plaintiff's arguments. In Eye Masters (supra), Justice Reed at pages 462-463 offered a brief comment on the plaintiff's submission in that case. The plaintiff in Eye Masters had argued that Clairol stood for the principle that the scope of protection conferred on trademarks associated with services is broader than the protection afforded to trademarks associated with wares. Justice Reed, at page 463, labelled this conclusion "somewhat bizarre".

     This reference to Clairol in Eye Masters by no means indicates that Justice Reed overruled Clairol. Since Eye Masters arose out of a motion for an interlocutory injunction, Justice Reed only analyzed the plaintiff's submission as a possible interpretation of Clairol to see if it raised a sufficiently serious issue for the purposes of the injunction. Unfortunately, in analyzing the plaintiff's submission in Eye Masters, Justice Reed mischaracterized at page 462 of her decision Justice Thurlow's holding in Clairol:

The argument that the scope of protection afforded to trade-marks which are associated with services is broader than that accorded to those associated with wares is based on the decision in Clairol International Corporation v. Thomas Supply & Equipment Co., [1968] 2 Ex. C.R. 552. That decision held that colour comparison charts, which referred to a competitor's trade mark, when affixed to a packaged hair dye was an infringement of the exclusive right to use granted by Section 19 of the Act.

Justice Thurlow had actually decided that the packages did not offend Section 19 because the defendants in that case had not used the plaintiff's marks "as trademarks" for the purposes of distinguishing their wares in connection with the plaintiff's marks. I also take issue with the soundness of the plaintiff's submission in Eye Masters about the ostensible greater scope of protection afforded to trademarks used in association with services. In Future Shop Ltd. v. A. & B. Sound Ltd. (1994), 55 C.P.R. (3d) 182 [hereinafter "Future Shop"], Justice MacKenzie of the British Columbia Supreme Court at page 188 expressed similar doubts that Clairol truly supports the decision in Eye Masters:

With respect, I do not think that distinction between wares and services is supported by Thurlow J.'s reasons in Clairol. His illustration of the shop counter price poster involved a price comparison analogous to the Eye Masters ad, or the A. & B. Sound ads which stress retail pricing and price comparisons in its use of the FUTURE SHOP trademark. In my view, the Clairol decision supports the position of A. & B. Sound that their fair and accurate comparative price ads do not offend s. 22(1) of the Trade-marks Act. I respectfully disagree that Clairol supports the decision in Eye Masters.

     In any event, my purpose in raising the Eye Masters case is not to exhaustively dispute its merits. Rather, I have referred to Eye Masters to demonstrate that even the sole judicial authority cited by the Plaintiff is hardly conclusive on the necessity of the Plaintiff's novel interpretation of Section 20 and Section 22 of the Trade-marks Act. Indeed, Justice Thurlow's decision in Clairol on the proper interpretation of Section 20 and Section 22 of the Trade-marks Act has been cited with approval and applied by numerous courts, including the Federal Court of Appeal in Syntex Inc. v. Apotex Inc. (1984), 1. C.P.R. (3d) 145 (F.C.A). However, as Justice MacKenzie noted in Future Shop, (supra),at page 188, Clairol has yet to be definitively interpreted by an appellate court.

     To return to the criteria for "use" as they are explained in the Clairol decision, the first point is that proof of "association" of the trademark is required for both Section 20 and Section 22. However, there is an additional component to "use" under Section 20 as a ground of infringement. To prove that the infringer has "used" the trade-mark, the registered owner must also demonstrate that the infringer has used the trademark "as a trade mark" for the purpose of distinguishing the infringer's wares or services.

    

     (v) Application : the "use in association" test and the Defendant CAW's status

     In applying the Clairol criteria of "use" to the facts of the present case, it becomes apparent that the Plaintiff had no alternative but to argue for novel interpretations of the grounds for trademark infringement. Under the "use in association" test, the common element for the meaning of use under both Section 20 and Section 22, the nature of Defendants' organizing activities and the apparent non-commercial status of the Defendant CAW proved an immediate and immovable obstacle for the Plaintiff's claim for relief under the Trade-marks Act. The status of the Defendant CAW was strongly contested during the course of oral argument since the test for use in association focuses on whether the association was made "during the ordinary course of trade" for wares or in the "advertising" of services. In Clairol, supra, at page 195 , Justice Thurlow recognized that "use in the course of trading is a limitation which is obviously present, the statute being one relating to trade marks and unfair competition....". The Defendant CAW disputed any notion that it could be labelled a commercial enterprise or that its campaign literature depicting the Plaintiff's trademarks could be classified as the "advertisement" of services. In turn, the Plaintiff argued that the Defendants' activities had sufficient commercial aspects to warrant labelling the union's leaflets and brochures a form of "advertisement" for the purposes of Section 20.

     The Court was offered two competing, but neither entirely satisfactory, visions of the Defendant CAW's status under the umbrella of the Trade-marks Act. The larger purpose of the Trade-marks Act itself in protecting the commercial integrity of corporate emblems and promoting the public's interest and confidence in the origin of wares and services in the marketplace was also debated by the parties. There is no doubt that the Defendant CAW is generally subject to the Trade-marks Act despite being what Justice Lesyk at page 469 in Les Rotisseries St.-Hubert Ltée v. Le Syndicat des Travailleurs(euses) de la Rotisserie St.-Hubert de Drummondville (C.S.N) (1986), 17 C.P.R (3d) 461 (Qué. S.C.) [hereinafter "St. Hubert"] called a not-for-profit collective body, an organization "qui n'est pas en affaires pour réaliser des profits et généralement n'exerce aucune activité commerciale"⁵. I was struck, however, by Defendant Warks' admission during the course of discovery testimony that the union stood to gain over one million dollars per year in union dues if it had successfully organized the 3 000 workers at Michelin's Canada's Nova Scotia Plants. If the union is not strictly a commercial enterprise, then there are still definite commercial dimensions to its activities. In any event, under the definition of "person" in Section 2, trade unions are explicitly included within the class of persons subject to the Trade-marks Act. I also take judicial notice of the Defendant CAW's own duly registered trade marks for wares and services⁶. The Defendant is subject to the Trade-marks Act because it cannot as the proverbial saying states, "have its cake and eat it too". In other words, the Defendant CAW cannot seek the protection of the Trade-marks Act for its own registered trademarks and still deny that its actions are subject to the infringement provisions of the very same Trade-marks Act.

     The resolution of this case does not directly turn on the question of the Defendant CAW's general status under the Trade-marks Act but on the issue of whether the Plaintiff's trademarks were used in association with the Defendants' wares or services. The Defendants' actions in this particular instance do not fall under the ambit of "use" of marks in association with wares or services under Section 20 and Section 22 of the Trade-marks Act. The fact that the union organizing activities might have reaped financial rewards does not alter my crucial determination that the trademarks were not "used" in association with wares or services under the Section 4 criteria for "use". There can be no use in association with "wares" because the definition of wares under Section 4(1) requires association during the ordinary course of trade. Handing out leaflets and pamphlets to recruit members into a trade union does not qualify under that test as commercial activity. Wares is defined to include "printed publications", but the Defendants are not in the business of printing leaflets. The only other possibility is use in association with "services". Section 4(2) says association is made for "use" of a trademark in relation to services if the services are "advertised". The term "services" is not defined in the Trade-marks Act but is given an expansive definition in the case law: (see Hartco Enterprises Inc. v. Becterm Inc. (1989), 24 C.P.R. (3d) 223). In its own trademarks, the Defendant CAW offers a complete description of the services offered in association with its marks. However, I find that the Defendants' distribution of leaflets and pamphlets does not qualify as "advertising". Once again, advertising carries a commercial connotation that is not borne out by the facts of this case. The Defendants were not advertising services to reap revenues although as I stated above, new members also represented significant amounts of money in the form of union dues. Dues, however, are not profits. Finally, a person receiving the leaflet depicting "Bibendum" or the information sheet citing "MICHELIN" would not make an association between use of the trademarks and the Plaintiff. I conclude therefore that since the Defendant CAW did not use the Plaintiff's trademarks in association with its wares or services, there can be no finding of infringement under either Section 20 or Section 22 of the Trade-marks Act.

     (vi) Application: the "use as a trade-mark" test

     Even if I would have determined otherwise and held that the Defendant CAW had used the trademarks in association with wares or services, the Plaintiff would have failed to prove "use" under Section 20 since Section 20 also requires proof of use of the mark as trademark. I accept the Defendants' submission that they were not using the "Bibendum" design as a trademark to indicate that CGEM Michelin or Michelin Canada was the source of the pamphlets and leaflets. The Defendants did not use the "Bibendum" design as a trademark but as a campaign tool to attract the attention of Michelin employees as they entered the factory gates. There could be no mistake that the Defendant CAW was the originator of the pamphlets and leaflets. Their origin was amply indicated by the use of the CAW logo in the top right-hand corner and the appeal in bold print on the bottom of the leaflets to act "before too late" by calling the CAW telephone number provided. As well, the Defendant CAW was not using the "Bibendum" to identify with CGEM Michelin's wares and services. Rather, the "Bibendum" was depicted to draw the eyes of the Michelin employees and stand in contrast to the usual corporate image. In his discovery testimony offered into evidence in its entirety, Defendant Wark characterized the union's intentions in regards to the use of the Plaintiff's "Bibendum" trademark:

You can have the corporate position of him hugging all the Michelin workers, as they were a big family, or you could possibly take my communication tool, which is to send the message that he is the boss, and he's a lot bigger, tougher, stronger than you are. That was my intent, to depict that. Based on that, don't treat him just like your dad, treat him as he is, he's the corporate boss and that's what Bib is, so look out.

         (Wark Discovery Transcripts, page 19, lines. 12-19)

     Now I do not at the same time rule that the Defendants' use of the Plaintiff's "Bibendum" design is permissible under the Copyright Act. Elsewhere in this judgment, I state reasons for why the Defendants' reproduction of a substantial part of the "Bibendum" copyright violates the Copyright Act. However, in discussing the grounds for infringement under the Trade-marks Act, it is relevant and crucial to pinpoint the purpose of the Defendant CAW's depiction of "Bibendum". Since "Bibendum" was not used as a trademark, there is in effect no use at all of the "Bibendum" under the Clairol criteria for Section 20.

     The term "MICHELIN" on the Defendant CAW's information brochures also does not qualify as use of the trademark "as a trademark". I do not accept the Plaintiff's submissions that the Defendant CAW's purpose in deploying "MICHELIN" on such information sheets as "Accident vs. Sick and Compensation" (Exhibit P-21) was to draw an inference that Michelin Canada was the originator of the information sheet. The placement of the term "MICHELIN" below a thin line separating it from the CAW logo is not reason enough for stating that the Defendant CAW has used the mark as a trademark. The Plaintiff submitted into evidence a bundle of the Defendants' campaign material using the name "MICHELIN" to which it took no offense because "MICHELIN" was cited under its corporate name and not as a trademark (Exhibit P-26). I find that the term "MICHELIN" is deployed in both Exhibit P-21, the alleged act of infringement and the inoffensive material in Exhibit P-26, in the same manner. In other words, the term "MICHELIN" is used not as a trademark but only as an abbreviated reference to the company name itself. There is no attempt in the information sheet entitled "Accident vs. Sick and Compensation" to indicate that Michelin Canada itself or its parent company, the Plaintiff CGEM Michelin, is the originator of the information sheet.

     (vii) Secondary Elements of Proof

     Since the Plaintiff has failed to prove that the Defendants used its trademarks, the threshold question in Section 20 and Section 22, I need not dwell on the secondary elements of each ground of infringement. In Section 20, the secondary question is whether the mark used was "confusing". In Section 22, the secondary question is whether the use was likely to depreciate the goodwill of the trademark. However, I will state that even if I had accepted the Plaintiff's novel interpretations and dispensed with the need to prove "use"under Section 20 or expanded the meaning of "use" beyond the Section 4 criteria in Section 22, the Plaintiff would have failed on the secondary components of each ground of infringement.

     In regards to Section 20 and the use of a "confusing trademark", I disagree with the Plaintiff's characterization and application of the test for confusion. The Plaintiff argued that a mark is confusing with a trademark merely if there is a confusing resemblance between the infringing mark and the registered. mark. The term "confusion" is not specifically defined in the Trade-marks Act, but Section 6 outlines the criteria for determining when marks are confusing trademarks.⁷ Contrary to the Plaintiff's submission, the test for "confusion" under Section 6 is not solely whether the registered mark and the infringing mark resemble each other. At its heart, the test for confusion goes to whether an average consumer, having a vague or imperfect recollection of the registered trademark, would infer from all the circumstances detailed in Section 6(5) that the allegedly confusing mark originates with the owner of the registered mark: (see Blue Cross, supra). In the present case, given the nature of the "wares, services or business" (Section 6(5)(c)) of the Plaintiff and the nature of the trade (Section 6(5)(d)), there is little likelihood of confusion over the source of the CAW leaflets and information bulletins. Although it is true that the Plaintiff's trademarks meet the criteria of Section 6(5)(a) and 6(5)(b) because they are widely known and of longstanding use, the test for confusion looks at the criteria of Section 6 as a whole to obtain an overall impression of possible confusion. In the present case, such additional factors as the menacing nature of "Bibendum's" pose on the leaflets and brochures and the prominence of CAW logos on the "Bibendum" leaflets and information sheets lead me to conclude that the use of the trademarks is not likely to confuse the average consumer.

     In a similar vein, even if I were to accept the Plaintiff's nuanced version of "use in a manner likely to depreciate the goodwill" under Section 22, the Plaintiff would have failed to prove that the goodwill of its trade marks had indeed been depreciated by the Defendants' activities. I disagree with the holding of Justice Lesyk at page 469 in St. Hubert, (supra), that the infringer has to use a mark identical to the registered mark to likely cause depreciation to the goodwill of the trademark. In Clairol, Justice Thurlow at pages 198-199 defined "goodwill" in relation to trademarks to mean "that portion of the goodwill of the business of its owner which consists of the whole advantage, whatever it may be of the reputation and connection, which may have been built up by years of honest work or gained by lavish expenditure of money and which is identified with the goods distributed by the owner in association with the trade mark". Justice Thurlow at page 199 in the same crucial Clairol decision analyzed depreciation of a trademark's goodwill to require "taking away the whole or some portion of the custom" attached to the wares and services associated with the trademark. The Plaintiff could not prove that the Defendant CAW's activities would likely have a negative effect or depreciate the drawing power of the Plaintiff's marks in the marketplace. Of course, the Plaintiff argued that a purchaser of Michelin tires seeing the Defendant CAW's leaflet depicting "Bibendum" wielding his boots in a most unfriendly fashion would have second thoughts about this seemingly heretofore jolly persona and the company it represents. However, I am struck by a statement made by counsel for the Defendants during the course of oral argument. He stated that the CAW is competing for the hearts and minds of CGEM Michelin's employees, not its customers. The leaflets and pamphlets were not distributed to the wider community but directed solely to Michelin Canada's 3000 employees at the Nova Scotia plants. In effect, the CAW's unionization literature might diminish CGEM Michelin's reputation as an employer, but I am not satisfied that the Plaintiff has proven that the leaflets and posters will deleteriously affect Michelin's reputation as a manufacturer, its specific role in the marketplace. Now undoubtedly some of Michelin's 3000 employees at the plants in Nova Scotia purchase Michelin tires, but they compose a minuscule portion of the market.

    

     (viii) Summary on Trademarks

     I have ruled, as it were, in one fell swoop on both Section 20 and Section 22 as grounds for trademark infringement. The Plaintiff failed to make its case under Section 20 because it did not meet the implicit requirement of showing that the Defendants had "used" the registered trademarks under the criteria of "use". The Plaintiff must also fail under Section 22 where the need to prove "use" is explicit and equally stringent. Thus, I conclude that the Defendants have not infringed the Plaintiff's trademarks under Section 20 and Section 22 of the Trade-marks Act because they have not "used" the Plaintiff's registered trademarks in the sale, distribution or advertisement of wares or services in association with a confusing trademark or in a manner that is likely to have the effect of depreciating the value of the goodwill attached to the trademark. Despite the best efforts of the Plaintiff, it is caught in the coils of the term "use" as it has been defined under Section 2 and Section 4 of the Trade-marks Act and interpreted by Clairol.

II. Copyright Issues

     The Defendants deny that there has been any infringement of copyright because the "Bibendum" on the leaflets and posters is an original work of the Defendants that does not substantially reproduce CGEM Michelin's copyright. The Defendants also argue that even if there has been reproduction of a substantial part, their "Bibendum" is a parody and therefore an exception to copyright infringement under Section 27(2)(a.1), fair dealing for the purpose of criticism.

     Section 3(1) of the Copyright Act defines copyright.

Section 3(1) reads in part:

For the purposes of this Act, "copyright" means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, .....

Copyright is the right to reproduce the work or a substantial part of the work. Section 27(1) defines infringement in reference to unauthorized actions by someone who does something only the copyright owner can do.

Section 27(1) reads:

Copyright in a work shall be deemed to be infringed by any person who, without the consent of the owner of the copyright, does anything that, by this Act, only the owner of the copyright has the right to do.

Thus, only the copyright owner can reproduce the work or a substantial part of the work. In the Statement of Admissions filed herein at paragraphs 7 to 14 inclusive and at paragraph 19, the Defendants have recognized that the Plaintiff owns registered and unregistered copyrights in the "Bibendum" design. The issue is whether the "Bibendum" depicted on the Defendants' leaflets and posters represents a reproduction of a substantial part of the Plaintiff's copyright and is thus an infringement of the Plaintiff's right.

     (i)Substantial Part

     The term "substantial part" is not defined in the Copyright Act. Case law has held that the quality more than the simple quantity of the reproduction is key: Justice Richard in U & R Tax Services Ltd. v. H & R Block Canada Inc.(1995), 62 C.P.R.(3d) 257 at pages 268-269 stated that the reproduction of a substantial part is a question of fact in which the Court will consider whether the alleged infringer has taken the distinct traits of the original work. Justice Mahoney in The Queen v. James Lorimer and Co.Ltd., [1984] 1 F.C. 1065 (F.C.A) [hereinafter "Lorimer"] at page 1073 recognized that the intention of the infringer, whether or not in commercial competition with the copyright holder, is irrelevant to the question of infringement.

The Act is clear. Infringement does not require that the infringing work compete in the marketplace with that infringed: it requires only that the infringer do something that the copyright owner alone has the right to do. It follows that, where infringement of copyright has been established, the owner of the copyright is prima facie entitled to an injunction restraining further infringement.

Such cases as Canadian Tire Corporation Ltd. v. Retail Clerks Union, Local 1518 of United Food and Commercial Workers Union et al. (1985), 7 C.P.R. (3d) 415 (F.C.T.D.) [hereinafter "Canadian Tire"] and St. Hubert, (supra), have held the same on the irrelevance of the infringer's intention or commercial status to the question of infringement.

     I have no difficulty in finding that the Defendants have reproduced a substantial part of CGEM Michelin's "Bibendum" design on their union campaign posters and leaflets. The discovery testimony and the likeness of the "Bibendum" on the posters to the registered copyright ensured that counsel for the Defendants had an uphill and futile battle in trying to convince the Court that there had been no reproduction of a substantial part of CGEM Michelin's "Bibendum". The Discovery testimony of Defendant Wark makes it clear that the Defendants strived to make their "Bibendum" a keen likeness of the original.

...I think it's clear to see that the head is probably the most accurate reflection and the rest of the body is not in proportion...to a regular, if I photocopied Bibendum right off your pieces of material.

Q. As a matter of fact, though, would you agree with me, that, and I'm trying to even go beyond the admission, that this is a substantial reproduction of a corporate Michelin Bib?

A.Yes. Oh, yes. Yes.

Q. In fact, it was meant to be as accurate as possible...

A. Absolutely. (page 21, lines 18-25, page 22, lines 1-4)

I cannot accept the Defendants' claim that Defendant Wark's reference to "accurate" reproduction in this instance was an allusion to reproduction in the sense of "designed to look like" in the act of photocopying and should not be binding on the Court's determination of the test for reproduction of a substantial part in law. Contrary to the submissions of the Defendants, I am certain that when something is designed to look like another object, I am permitted to take the next logical step and conclude that it does indeed look like the object!

     Counsel for the Defendants also argued that the "Bibendum" on the union leaflets and posters did not reproduce a substantial part of the original "Bibendum" because as a parody of the original, it constituted an entirely new work. Counsel cited Joy Music Ltd. v. Sunday Pictorial Newspapers (1920), Ltd., [1960] 1 All E.R. 703, 2 Q.B. 60 [hereinafter "Joy Music" cited to All E.R.] in which Justice McNair at page 708 ruled that the test for infringement in regards to parody is whether the defendant "had bestowed such mental labour on what he has taken and subjected it to such revision and alteration as to produce an original work". The Defendants also cited Motel 6, Inc. v. No. 6 Motel Ltd. et al. (1981), 127 D.L.R. (3d) 267 (F.C.T.D.) [hereinafter "Motel 6"] to argue that it is immaterial if there is evidence of reproduction of a substantial part as long as there is evidence of "independent creation".

     I take issue with how the Defendants have framed the test for reproduction of a substantial part. First, I cannot agree with the Defendants' characterization of the holding in Motel 6. There is no indication in Justice Addy's brief comments on copyright infringement that he would have permitted reproduction of a substantial part as long as there was some evidence of independent creation. Justice Addy ruled that the plaintiff in that case had not even established ownership of the copyright, so he was not dwelling on the issue of reproduction of a substantial part. In fact, Justice Addy at page 274 in Motel 6 did conclude that there was substantial similarity.

I would also have concluded that the copying of that mark done by the plaintiff, although not an exact replica, was sufficiently close to constitute an infringement. The mere fact that the clover-leaf design was avoided and replaced by a circle would not have been sufficient to avoid a finding of infringement. There is substantial similarity. This constitutes prima facie evidence of copying and no satisfactory evidence of independent creation was adduced: see King Feature Syndicate, Inc. v. O. and M. Kleemann, Ltd., [1941] 2 All E. R. 403 (H.L) at p. 414, followed in Collins et al. v. Rosenthal et al. (1974), 14 C.P. R. (2d) 143 at p. 147.

     Second, during the course of oral argument, the Defendants mischaracterized the proper test for infringement in citing Joy Music to mean that there can be both reproduction of a substantial part and a finding of no infringement as long as there is sufficient mental effort. Justice Falconer in Schweppes Ltd. v. Wellingtons Ltd., [1984] 10 F.S.R.⁸ 210 (Ch. D) at page 212 addressed the holding in Joy Music as it had been elucidated in the head note for Joy Music as reported in 2 Q.B 60 and argued by the defendant in Schweppes. The Defendants in the current proceedings have appeared to embrace the same mistaken characterization of the holding in Joy Music.

:"Held [in Joy Music],(1) that in considering whether a parody of a literary work constituted infringement of the copyright in that work the main test to be applied was whether the writer had bestowed such mental labour upon the material he had taken and had subjected it to such revision and alteration as to produce an original work"......

Put in that form, with all due respect I do not think that a correct statement of the law. The sole test is whether the defendant's work has reproduced a substantial part of the plaintiff's ex hypothesi copyright work. The fact that the defendant in reproducing his work may have himself employed labour and produced something original, or some part of his work which is original, is beside the point if none the less (sic) the resulting defendant's work reproduces without the licence of the plaintiff a substantial part of the plaintiff's work. The test every time in my judgment is, as the statute makes perfectly plain: Has there been a reproduction in the defendant's work of a substantial part of the plaintiff's work?"

     Justice Baker in Williamson Music Ltd v. Pearson Partnership Ltd., [1987] 13 F.S.R. 97 (Ch. D) at page 106 cited with approval Justice Falconer's analysis of the test for reproduction of a substantial part: "When considering any question of parody, I accept that test of Falconer J. that the test every time is, as the statute makes perfectly plain: "Has there been a reproduction in the defendant's work of a substantial part of the plaintiff's work?"

     In fact, in Joy Music at page 708, Justice McNair found that there had been no reproduction of a substantial part. The defendant in that case had taken a small portion of the original work, the immortal phrase "Rock-a-Billy, Rock-a-Billy, Rock-a Billy, Rock" from the chorus of a rock song and modified it as a caption under an newspaper article and photo on Prince Philip's supposedly feckless and unrestrained sporting activities. The caption used was "Rock-a-Philip Rock! Rock!" followed by parodic lyrics in two verses.

     Thus, the true test for infringement is whether the act complained of is only an act that the copyright owner could do under Section 27(1), including reproduction of the original or a substantial part of the work. The expenditure of some mental labour is not enough to trump the fact that there has been reproduction of a substantial part of a work. Persons who adapt novels into musicals or films also expend mental effort but if there is reproduction of a substantial part of the original, there is still infringement if the consent of the copyright owner has not been obtained. To escape the charge of infringement, the Defendants' "Bibendum" must be an entirely new work, an "original result" in Justice McNair's phrase from Joy Music. In effect, it is immaterial if the Defendants have employed some labour and some originality if there is nonetheless reproduction of a substantial part of the original. In any event, I can find no merit in the Defendants' submission that the "Bibendum" on their posters and leaflets displayed sufficient mental labour and originality to constitute an entirely new result. It is true that the Defendant CAW did not simply photocopy an existing Michelin "Bibendum" and tack the identical corporate "Bibendum" on to its campaign literature. Counsel for the Defendants highlighted such ostensible points of difference between the "Bibendum" depicted on the leaflets and posters and the original copyright as the distinct smile, peculiar gleam in the eyes, upraised foot, bigger boots, the workers underneath this booted menace and the captioned dialogue. Despite all these subtle distinctions and Counsel's exacting critical acumen and appraisal, I cannot find sufficient mental effort and independent thought in the union's "Bibendum" such that it is an entirely new work.

     However, I do find reproduction of a substantial part of the Plaintiff's work - so much so that the original "Bibendum" is immediately apparent in the infringing work. Reproduction of a substantial part is a question of impression that minor differences in "Bibendum's" body posture and the breadth of his smile do not negate. The union has depicted a figure that is the essence of "Bibendum" because it is composed out of tires, sports boots, has a bald head, crossed arms and a bulging torso. In short, the Defendant CAW has reproduced a substantial part of the "Bibendum" in the Plaintiff's registered copyrights and unregistered copyright. The addition of the roughly drawn workers and their cautionary dialogue on the union's leaflets and posters does not represent a significant difference in the use of the "Bibendum" copyright. In Defendant Wark's Discovery Testimony, quoted earlier in reference to the issue of whether the Defendants had used "Bibendum" as a trademark, Wark spoke of seeking to use the Bibendum as a communication tool. However, since the question of copyright infringement is one of impression, the intention of the infringer is less important than the fact that a substantial part of the original work has been reproduced. Intention might only later become relevant if the infringer falls under an exception to copyright infringement because the use of the copyrighted original qualifies as "fair dealing for the purpose of criticism, review or newspaper summary". The message purportedly behind the union's "Bibendum" cannot overcome the fact that a substantial part of the copyright original has been reproduced. The threshold for whether an act constitutes reproduction of a substantial part and thus infringement is not so low that an upraised boot is enough to constitute a new creation. It has been said that everyone is a critic, but I have no hesitation in dashing Counsel's arguments on the supposed creative spark found in the Defendant CAW's posters and leaflets.

     (ii) Parody as an exception

     As I have ruled that the Defendants have reproduced a substantial part of the Plaintiff's work and thus infringed the copyright, the burden now shifts to the Defendants to prove that they fall under an exception to copyright infringement. Like the Plaintiff in regards to the Trade-marks Act, the Defendants have offered a novel argument and radical interpretation of the law. In this case, the Defendants argue that parody is a form of "criticism" under Section 27(2)(a.1), the relevant exception to copyright infringement.

Section 27(2)(a.1) reads:

The following acts do not constitute an infringement of copyright:

....

(a.1) any fair dealing with any work for the purposes of criticism, review or newspaper summary, if

         (i)the source, and

         (ii) the author's name, if given in the source,

are mentioned.

     Parody is not explicitly discussed in the Copyright Act. The Defendants acknowledged that parody in previous cases had always been argued as an issue under Section 3(1) or that there had been no reproduction of a substantial part of the copyright because it constituted a new work: (see Ludlow Music Inc. v. Canint Music Corp. (1967), 62 D.L.R (2d) 200 (Ex. Ch) [hereinafter "Ludlow"], MCA Canada Ltd.-MCA Canada Ltée. et al. v. Gillberry & Hawke Advertising Agency Ltd. et al. (1976), 28 C.P.R. (2d) 52 (F.C T.D), [hereinafter "MCA"] and ATV Music Publishing of Canada Ltd. v. Rogers Radio Broadcasting Ltd (1982), 65 C.P.R. (2d) 109 (Ont. H.C.), [hereinafter "ATV"]. This long stream of Canadian cases held that parody is not an exception to acts of copyright infringement. The Defendants attempted to distinguish the previous cases by arguing that they all discussed song parodies under Section 3 (1)⁹ or did not address the issue of whether the parody was a new work displaying original thought that did not infringe the copyright because they did not reproduce a substantial part of the work. Since words and music are so inextricably linked, the Court found in those cases that reproducing a substantial part of the music even with humorous parodic lyrics still constituted infringement of the copyright.

     I am not satisfied that these cases are applicable to the current matter on the status of parody in Canadian law even if the fair dealing exception was not strictly pleaded. Under the Copyright Act, "criticism" is not synonymous with parody. Criticism requires analysis and judgment of a work that sheds light on the original. Parody is defined in the Collins dictionary (Second Edition) as "a musical, literary or other composition that mimics the style of another composer, author, etc. in a humorous or satirical way". In Zamacoïs v. Douville and Marchand, [1943] 3 Fox Pat. C. 44 Justice Angers at page 71 held that the Court will consider the wider context, both the quantity and quality of quotations from the original, in its evaluation of a work as "criticism": "The right of literary criticism includes the right of citation of passages from the work criticized and the number or the importance of the citations does not modify the character of the publication if they serve only to contribute to the demonstration of the criticism undertaken". In the Canadian and Commonwealth courts, parody has never been held to figure as criticism although the term criticism is not confined to "literary criticism".

     The Defendants have added a twist to this usual reasoning by urging the Court to consider, in line with the recent decision of the American Supreme Court in Luther R. Campbell a.k.a Luke Skywalker v. Acuff-Rose Music, Inc., 114 S.Ct. 1164 (1994) [hereinafter "Acuff-Rose"] that parody is a form of "criticism" under Section 27(2)(a.1). The Defendants submitted that even though their "Bibendum" constituted a reproduction of a substantial part of the Plaintiff's copyright, this was a type of parody that by the very definition of the term parody required substantial reproduction of the original to make its point. The addition of the men under "Bibendum's" upraised leg, the dialogue and the alteration in "Bibendum's" expression created a new, integrated "Bibendum" design that was meant to ridicule and mock "Bibendum's" usual corporate image as a benign, smiling and safe father figure. The Defendants further argued that they had no need to cite the source, a requirement under Section 27(2)(a.1) since in a parody, the source is implicitly known to the onlooker.

     As with the Plaintiff's creative and novel interpretations of the Trade-marks Act, I have rejected the Defendants' submissions. The Defendants fall short because American case law permitting parody as criticism under the American doctrine of "fair use" is not applicable nor terribly persuasive in the Canadian context of a different legal regime and a longstanding trend to deny parody as an exception. As well, exceptions to copyright infringement should be strictly interpreted. I am not prepared to read in parody as a form of criticism and thus create a new exception under Section 27(2)(a.1).

     (iii)American case law and Strict Interpretation

     The Defendants pointed to the recent unanimous decision of the American Supreme Court in Acuff-Rose, (supra), as sole authority for reading in parody as a component of criticism or the exception to infringement. In effect, the Defendants are admitting, "Yes, we did infringe the Plaintiff's copyright by copying a substantial part of the original but as a defence, we can plead that we were parodying the original, a form of fair dealing for the purpose of criticism under Section 27(2)(a.1)". The Defendants admitted that they were urging the Court to accept a new interpretation of Section 27(2)(a.1) in the light of the American decision. In Acuff-Rose, the defendant had used the characteristic bass riff and opening line from Roy Orbison's classic rock song, "Pretty Woman" in its own rap song with new lewd and crude lyrics and distinctive rap background motifs. Justice Souter writing for the Court¹⁰ held at page 1173 that the Court of Appeals had erred in overstating the parodist's commercial motive to deny the fairness of the use: "In giving virtually dispositive weight to the commercial nature of the parody, the Court of Appeals erred. "The rap version of "Pretty Woman" could still qualify as a parody or critique of the romantic fantasy embodied in the original song and could be considered an exception to copyright infringement as fair use for the purpose of criticism under Section 107 of the American Statute. The United States Supreme Court remanded the case to the trial level to reconsider the rap version of "Pretty Woman" against all of the factors for "fair use" in Section 107.

     While the American case is most fascinating from both a cultural and legal perspective, I have not found it to be persuasive authority in the context of Canada's particular copyright regime. Chief Justice Laskin in [1976] 1 S.C.R. 616">Morgentaler v. The Queen ,[1976] 1 S.C.R. 616 held at page 629 that a Court should be prudent in applying American precedents to the Canadian context and should take into consideration the particular rules of each system of law: "...they do not carry any authority beyond persuasiveness according to their relevance in the light of context, with due regard to the obvious differences that exist...". American decisions are only persuasive to the extent that the laws in both jurisdictions are similar: (see [1980] 1 S.C.R. 357">Compo Co. Ltd. v. Blue Crest Music, [1980] 1 S.C.R. 357 at page 367 [hereinafter "Compo"] ). The Plaintiff rightly pointed out many distinctions between Section 107¹¹ of the American Copyright Act and our own system. Contrary to the opinion of James Zegers, author of an article entitled, "Parody and Fair Use in Canada after Campbell v. Acuff-Rose" in (1994) 11 C.I.P.R. 205, I hold that these distinctions are crucial.¹² First, the American system is open-ended when it comes to exceptions. In other words, the list of exceptions is not exhaustive but should be on a case-by-case basis since Section 107 reads, "for purposes such as criticism, comment..." (emphasis added). As well, the four factors in Section 107 for determining whether use is fair are equally not exhaustive since they are prefaced by the phrase, "shall include". This is the not the case in Canada. The exceptions to acts of copyright infringement are exhaustively listed as a closed set in sub-sections 27(2)(a) to 27(2)(m) and 27(3) of the Copyright Act. They should be restrictively interpreted as exceptions. Justice McLachlin in Bishop v. Stevens, [1990] 2 S.C.R. 467 at pages 480-481 [hereinafter "Bishop"] cautioned the Court against reading in exceptions to copyright infringement given the detailed and explicit exemptions: "Furthermore, an implied exception to the literal meaning of s. 3(1)(d) is all the more unlikely, in my opinion, in light of the detailed and explicit exceptions in s. 17(2) (now s.27(2)) of the Act, providing for matters as diverse as private study, research or critical review...". I cannot accept that I should give the word "criticism" such a large meaning that it includes parody. In doing so, I would be creating a new exception to the copyright infringement, a step that only Parliament would have the jurisdiction to do.

     Second, "fair use" in the American system is not equivalent to "fair dealing" in Canada. Unlike the explicit requirement in Section 27(2)(a.1), the American system does not require that the critic give the source and author of the copyright if this information is provided in the original. In sum, parody does not exist as a facet of "criticism", an exception to infringement in Canadian copyright law. I do accept that parody in a generic sense can be a form of criticism; however, it is not "criticism" for the purposes of the Copyright Act as an exception under the fair dealing heading.

     In any event, the Plaintiff had argued that the "Bibendum" design on the leaflets and posters did not even qualify as a parody because the object of the parody or critical scorn has to be the original work, the original Michelin corporate "Bibendum" and not target CGEM Michelin's role as an employer. I do not intend to discuss at length this argument over what constitutes the proper object of parody. The American Supreme Court in Acuff-Rose, (supra) held at page 1172 that to qualify as a parody, the commentary must have "critical bearing on the substance or style of the original composition". Since I have already ruled that parody does not exist as an exception to copyright infringement, it is immaterial to determine whether the proper target of the parody in this instance is the original work or the company represented by the original work. I will state, however, that I believe that the two are for all for intents and purposes equivalent in the public's perception. Michelin is the "Bibendum" and the "Bibendum" is Michelin, so any criticism of the "Bibendum" iis criticism of Michelin and vice versa.

     (iv) Mention Source and Fair Treatment

     Thus, I hold, in line with the prevailing Canadian authorities, that parody does not exist as criticism, an exception to acts of copyright infringement. And even if I were to follow the American authority in Acuff-Rose and state that parody exists as a fair dealing exception to infringement, the Defendants would have failed under the two secondary elements of Section 27(2)(a.1). First, the Defendants did not mention the source and author's name of the original on their "Bibendum" leaflets and poster. This is a condition of the fair dealing exception since Section 27(2)(a.1) states, "if (i)the source, and (ii) the author's name, if given in the source, are mentioned." The Defendants argued that by its very nature, every parody meets the criteria of mentioning the source and author since parody to succeed as parody must implicitly conjure up the heart of the original work. On the meaning of the term "mention", the Defendants were at pains to argue that mention is less stringent than another term like "cite" that Parliament could have used. The Defendants further submitted that "mention" means a casual allusion that is met by parody's implicit acknowledgement of the original by the mere fact of its necessary similarity to the original work.

     With respect, I have difficulty accepting the Defendants' submissions on this issue. It is circular to argue that parody implicitly mentions the source and author because it is a parody. What if the source and author is not conjured up in the onlooker's mind because the parody is not very well executed, the parodist's target is particularly obscure or the recipient of the parody is dull-witted? Is it only "good" parodies that qualify under Section 27(2)(a.1)? The law cannot permit such distinctions. As well, the Defendants have to walk a very fine line in arguing that parody is a form of criticism that dispenses with the need to mention the source and author. Unfortunately for the Defendants, in walking this fine line, they have fallen into the abyss of logical inconsistency. According to the Defendants, the "Bibendum" depicted on the union leaflets and posters has to be similar enough to the Michelin original to implicitly "mention" the source but distinctive enough that it substantially reproduces the Michelin original but still constitutes a new work of criticism. The two facets of this argument are paradoxical and cannot be reconciled. The fact that the law requires mention of the source and author is yet another barrier to the Defendants' attempt to read in parody under the term "criticism". If parody does not require mention of the source because of its very nature as a parody, then parody cannot be included under the term "criticism" which so obviously requires mention of the source. The requirement to actively mention the source and author is there for a reason and not to be lightly skipped over. The need to require the source was added to amendments to the Copyright Act in An Act to Implement the North American Free Trade Agreement, S.C. 1993, c.44, s. 64(1). There is no Canadian case law on what "mention" means but I am in agreement with the Plaintiff that it is more than a passive or implicit acknowledgment in parody. According to the Concise Oxford Dictionary (Eight Edition), mention means "to refer to briefly, to specify by name or to reveal or disclose...". When the Plaintiff uses the "Bibendum", it gives Michelin as the source. The author or originator is not stated so at the very least the Defendants have to explicitly give the source and not the author if they hope to qualify under the fair dealing exception in Section 27(2)(a.1) when they use the "Bibendum" design. This they have not done.

     In addition, the Defendants did not treat the original work in a fair manner, a further requirement of the "fair dealing" exception. The Defendants argued that as a parody, their work could not be held to treat the copyright in a kid glove fashion. Parody has to bite and in some way batter the reputation of the original. However, once again, the Defendants have sought to dilute the usual rules of the fair dealing exception and defeat the wording of Section 27(2)(a.1) simply by labelling the "Bibendum" posters and leaflets a parody. It is not enough that because it is a parody, there is no need to mention the source. Now the Defendants would have the Court rule that by the mere fact of the parody label, the Defendants are permitted to forego treating the Plaintiff's copyright in a fair manner, a requirement for all the existing exceptions like criticism, review and summary. To accept the Defendants' submissions on parody would be akin to making the parody label the last refuge of the scoundrel since the Court would have to do away with two of the usual strictures of Section 27(2)(a.1): mentioning the source and fair treatment. The term "fair dealing" is not defined in the Copyright Act but I accept the Plaintiff's submission that the overall use of the copyright must be "fair" or treat the copyright in a good faith manner. The Collins Dictionary defines "fair" as "free from discrimination, dishonesty, etc. just; impartial". The two secondary elements of mentioning the source and fair treatment are linked since the requirement that the critic mention the source and author's name is in some ways a testament to fair treatment. Whether the treatment of the original is in good faith is a question of degree and impression looking to the quality and quantity of the original work used: (see Husband v. Vosper, [1972] 2 Q.B. 84 (C.A)). Once again, as was the case in determining whether there has been reproduction of a substantial part, it is a question of impression. I have already ruled that the Defendants cannot avail themselves of the exception under Section 27(2)(a.1) but even if parody were to be read in as criticism, the Defendants would have to adhere to the bundle of limitations that go with criticism, including the need to treat the copyright in a fair manner. The Defendants held the "Bibendum" up to ridicule. Rather than the cuddly marshallow creature of safety and responsibility, "Bibendum" became the boss's henchman about to stomp two workers into submission. The substantial quantity of the original work used in the leaflets and posters also casts doubt on the fairness of the Defendants' treatment.

     (v) Conclusions on Copyright

     I am not prepared to take the two leaps of faith urged by the Defendants. The first is that parody is synonymous with criticism. The second is that the Defendants can dispense with the need to mention the source and fair treatment because of the peculiar nature of parody with its implicit acknowledgment of the source. My role is not to create legislation but to apply the existing rules crafted by Parliament. If Parliament had wanted to exempt parody as a new exception under the fair dealing provision, it would have done so: (see Bishop, supra, at pages 483-484). Since the Defendants have shown little creativity in depicting the "Bibendum", I do not accept the Defendants' contention that their creativity is being fatally stifled by a repressive copyright regime. I am also not convinced by the Defendants' invocation of public policy. They raised the spectre of editorial cartoonists being barred from using the "Bibendum" in a parodic way. If the Plaintiff were to be thin-skinned enough to attack all unflattering depictions of the "Bibendum", I would suggest that such cartoons could be protected as sufficiently new works under Section 3(1) if they do not reproduce a substantial part of the original and display a modicum of thought such as to produce a new result. They would therefore not be considered acts of infringement. Parody would be protected against charges of infringement by its dissimilarity to the original work as long as it did not produce a substantial portion of the original. As Zegers (supra) noted at page 208 of his article on the Acuff-Rose decision in the Canadian context, written parodies would be protected because they could not hone so closely to the original as in a song parody. As well, creative works depicting some critical variation of the "Bibendum" could be protected under the umbrella of "criticism" within the context of a newspaper or journal article describing CGEM Michelin and its subsidiary Michelin Canada.

     By substantially reproducing the "Bibendum" design on their union campaign leaflets and posters, the Defendants have infringed the Plaintiff's copyrights. The Defendants cannot claim that they fall under the fair dealing for the purpose of criticism exception under Section 27(2)(a.1).

     Furthermore, the Plaintiff cited Section 3(1) specifically against the Defendants Hargrove, President of the Defendant CAW and Defendant Wark, the union's Nova Scotia organizer, for authorizing the reproduction of the "Bibendum". In Compo (supra), Justice Estey at page 373 held that Section 3(1) establishes a separate tort for authorizing the infringement of copyright apart from the actual act of reproducing the copyright. Amongst the rights of the copyright holder is the right to authorize another to use the copyright. In Les Dictionnaires Robert Canada SCC v. Librairie du Nomade Inc. (1987), 16 C.P.R. (3d) 319 (F.C.T.D), Justice Denault, at pages 335-336, held that an individual is not personally liable for the actions of an organization merely by his or her title as senior officer or president. It is a question of fact to determine whether the individual acted with full knowledge and in a voluntary and deliberate manner to make him or herself personally liable. It is clear from their Discovery Testimony offered into evidence and the Statement of Admissions at paragraph 34 that Defendants Wark and Hargrove did authorize the copying of the Bibendum design. I therefore rule that the Defendants Hargrove and Wark are also liable separately under Section 3(1).

     However, the Plaintiff does fail on an additional ground of copyright infringement. In its Amended Statement of Claim, the Plaintiff had also cited Section 27(4)(b) of the Copyright Act.

     Section 27(4)(b) reads:

Copyright in a work shall be deemed to be infringed by any person who

.....

(b) distributes either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright

....

any work that to the knowledge of that person infringes copyright or would infringe copyright if it had been made within Canada.

     This ground of copyright infringement was only tentatively pleaded during the course of oral argument. I hold that the Defendants are not liable under Section 27(4)(b) for distributing a work that they knew violated the copyright of another when such distribution would have a prejudicial affect. The Plaintiff did not offer any evidence on the prejudicial effect to CGEM Michelin although the Defendants' admitted knowledge of the Plaintiff's copyright. Section 39 establishes that persons are presumed to know of the existence of copyright if it is registered. The Defendants submitted that this case shows no prejudicial effect, unlike two cases not argued specifically under Section 27(4)(b) but where the parties successfully won interlocutory and permanent injunctions because of the threat of harm. In Canadian Tire (supra), the striking employees of a Canadian Tire franchise urged a boycott of the franchisor by distributing leaflets that depicted the Canadian Tire logo with an overlay of a diagonal line in the manner of international traffic signals indicating "do not enter". In St. Hubert (supra), the union's leaflets with a modified St. Hubert rooster - a knife in its hands! - were distributed to the larger community. In the present case, the CAW's leaflets were only distributed to Michelin workers in the hopes that they would join the union.

III. Constitutional Issues     

     Since I have already ruled that the Defendants have not violated the Trade-marks Act, the constitutionality of the Trade-marks Act is not in issue when it comes to the Defendants' claim under the Canadian Charter of Rights and Freedoms [being Part I of the Constitution Act, 1982, Schedule B, Canada Act, 1982, 1982, c.11 (U.K.) [hereinafter the "Charter"]. However, if I am incorrect in holding that there has been no infringement of the Trade-marks Act, the principles and outcome detailed below on the infringement of the Copyright Act, are equally relevant to the Trade-marks Act.

     The Defendants submit that their posters and leaflets depicting "Bibendum" are forms of expression protected by section 2(b) of the Charter. The Defendants further submit that if Sections 3 and 27 of the Copyright Act limit their right to produce such pamphlets and leaflets, the sections are not saved under Section 1 of the Charter as "reasonable limits prescribed by law as can be demonstrably justified in a free and democratic society". However, the Defendants are not urging the Court to simply take the bold step of invalidating the Copyright Act. Rather, the Defendants suggest that the Court may use the technique of "reading down" the word "mention" in Section 27(2)(a.1) of the Copyright Act to preserve the constitutionality of the Copyright Act and safeguard the actions of the Defendant CAW.

     There had been some acknowledgement in earlier case law like Canadian Tire, supra, and Lorimer (supra), that the Charter could potentially have a bearing on cases of copyright infringement. However, the nature and scope of the Charter's impact was left unclear. In Canadian Tire, Justice Strayer at page 420 held: "while there may be situations where the guarantee of freedom of expression in paragraph 2(b) of the Canadian Charter of Rights and Freedoms may properly limit the protection otherwise given to the owners of copyright, I do not believe this represents such a situation." In Lorimer (supra), the issue of the impact of the Charter as a defence was also raised and quickly dismissed. Justice Mahoney at page 1079 stated, "If, indeed, the constraints on infringement of copyright could be construed as an unjustified limitation on an infringer's freedom of expression in some circumstances, this is not among them". From the brief discussion in both cases of the Charter issue, it appears that the Court found that the infringers' use of the copyrighted material demonstrated insufficient original thought to be labelled protected expression under Section 2(b).

     The Defendants argue that their parody of the Plaintiff's "Bibendum" copyrighted design does deserve the label protected expression. The Defendants also submit that the particular and narrow facts of the present case embody the "circumstances" and "situations" alluded to in Canadian Tire and Lorimer. I agree with the Defendants that the use of a copyright by a union to parody a company logo in the midst of an organizing campaign does raise certain constitutional issues.¹³ I do, however, part company with the Defendants on the resolution of the constitutional question. I hold that the Defendants' right to freedom of expression was not restricted. The Charter does not confer the right to use private property - the Plaintiff's copyright - in the service of freedom of expression. Since there has been no infringement of the Defendants' freedom of expression, the Plaintiff has no need to justify Sections 3 and 27 of the Copyright Act under Section 1 of the Charter.

     I did not arrive at this seemingly straightforward conclusion without carefully considering the nature of the parties' rights and the proper characterization of the Defendants' leaflets and posters as unprotected and improper forms of expression. I have therefore chosen to address in detail the parties' arguments throughout the analysis to do justice to the subtlety and complexity of the constitutional issues.

     Technique of Constitutional Analysis

     The Defendants have the burden of proving that their pamphlets and leaflets were within the scope of the freedom of expression guarantee under Section 2(b): (see R v. Oakes, [1986] 1 S.C.R. 103 at page 114 [hereinafter "Oakes"]). The Defendants also have to prove that the purpose or effect of the Copyright Act is to restrict freedom of expression. Only if the pamphlets and leaflets were protected forms of expression restricted by the Copyright Act does the analysis proceed to Section 1.

     Section 2(b) provides:

2. Everyone has the following fundamental freedoms:

             ...

(b) freedom of thought, belief, opinion and expression, including freedom of the press and other media of communication.

    

A.. Was the Defendants' Activity Within the Sphere of Conduct Protected by Freedom of Expression ?

     (i) Do the Defendants' leaflets constitute expression?     

     Activity is expressive if it attempts to convey meaning: ( Irwin Toy Ltd. v. Quebec (A.G), [1989] 1 S.C.R. 927 at page 968 [hereinafter "Irwin Toy"]). Now the original corporate "Bibendum" certainly contains meaning as expression. It conveys a message of security and the positive corporate image of CGEM Michelin and its subsidiaries. However, if the message conveyed by the "Bibendum" on the Defendants' pamphlets and leaflets is very different, can they lay claim to it as protected expression even though the "Bibendum" is not the fruits of the Defendants' own labours? In Lorimer (supra), at page 1079, Justice Mahoney for the Federal Court of Appeal held that the freedom of expression defence is not available to infringers when "so little of [their] own thought, belief, opinion and expression is contained in the respondent's infringing work that it is properly to be regarded as entirely an appropriation of the thought, belief, opinion and expression of the author of the infringed work.". In Lorimer, the infringer had simply abridged into one volume the existing seven volumes of the original work, a government report entitled The State of Competition in the Canadian Petroleum Industry. In effect, Justice Mahoney appears to be stating that one cannot appropriate or use another's property and assert that it is your own expression for the purposes of the Charter.

     The difficulty in applying this standard to the case at bar is that the "Bibendum" depicted on the Defendants' leaflets and brochures is not "entirely an appropriation" of CGEM Michelin's "Bibendum" although it does reproduce a substantial part of the Plaintiff's work. I had ruled previously on the copyright issue that the Defendants had infringed the Plaintiff's copyright because such modifications to the corporate "Bibendum" as the raised foot, about to stomp the workers into submission, did not constitute what Justice McNair at page 708 in Joy Music (supra), had called an "original result" for the purposes of Section 3 of the Copyright Act. The question now is whether these modifications, although not sufficient to constitute a new work under the Copyright Act, warrant the label "expression" under Section 2(b) of the Charter. In the words of Justice Mahoney in Lorimer, do the leaflets and pamphlets contain enough of the Defendants' own "thought, belief, opinion and expression" to stand as expression?

     In the years since the Lorimer decision in 1984, the Supreme Court of Canada has offered a very broad and inclusive definition of expression, including under the scope of protected expression, pornography and hate literature: (see R. v. Butler, [1992] 1 S.C.R. 452 and R v. Keegstra, [1990] 3 S.C.R. 697). The required mental effort is slight since it is sufficient if the expression conveys meaning. The defendants certainly employed some mental labour in producing their leaflets and modifying the "Bibendum". The "Bibendum" as used by the Defendant CAW also conveys meaning, a meaning entirely different from the original "Bibendum". At its minimum, the meaning in this instance is that Michelin workers should band together in the union before they are stomped into submission by the corporate powers symbolized by the "Bibendum". I agree with the Defendants that the test for expression is not whether the message or meaning is favourably received since it is sufficient if there is an attempt to convey meaning: (see Weisfeld v. Canada, [1995] 1 F.C. 68 (C.A) at page 85 [hereinafter "Weisfeld"]). The test for expression under Section 2(b) of the Charter is also not equivalent to the strict standards for "original works" under Section 3 of the Copyright Act. On this question of the test for expression under Section 2(b), I take issue with the brief allusion in Canadian Tire at page 420 to the need for "sufficient original thought". Even though the Defendants' leaflets represent a substantial reproduction of the Plaintiff's "Bibendum" copyright and are not "original works" for the purposes of Section 3 of the Copyright Act, they are still examples of expression.     

     (ii) Is the use of the "Bibendum" on the leaflets a prohibited form of expression?

     Does my initial holding that use of the "Bibendum" constitutes expression necessarily mean that every depiction of someone else's copyright is protected expression under Section 2(b)? The answer is no. It is not enough to determine that the Defendants' leaflets and posters are expression. In Weisfel, (supra), at page 82, Justice Linden of the Federal Court of Appeal held that the Court must also determine whether there are "any special circumstances which would warrant removing that expression from the protected sphere under the Charter". The particular form of the expression is one such circumstance. While all content is protected under the Charter, not all forms of expression are protected. Violent forms of expression are clearly not protected: (Irwin Toy, supra at page 970). In our constitutional analysis, we must now plunge into the difficulties of the interplay between content and form and the connection between the use of public and private property in the name of freedom of expression. The Court must resolve questions concerning both the proper characterization of the Defendants' use of the "Bibendum" and the nature of the Plaintiff's interest in the copyright as an element of private property.

     Can use of a copyright be called a form of expression? Expression has both content and form, form being an issue of how the meaning is conveyed and often inextricably connected to content: (see Irwin Toy, supra, at page 968). If form is defined as "how the meaning is conveyed", it seems as if "use" of property could constitute a form of expression. The Plaintiff argues that using another's private property is a prohibited form of expression or else qualifies as a special circumstance warranting the removal of the expression from the protected sphere. I agree with the Plaintiff's submission that the Defendants are not permitted to appropriate the Plaintiff's private property - the "Bibendum" copyright - as a vehicle for conveying their anti-Michelin message. Thus, the Defendants' expression is a prohibited form or is subject to what Justice Linden at page 83 in Weisfeld (supra), called a "special limitation" and is not protected under the umbrella of Section 2(b).

     (iii) The use of private property and freedom of expression

     I am not aware of any decisions from the Supreme Court of Canada providing direct guidance on how a Court should evaluate the use of a copyright in determining the scope of protection under Section 2(b) of the Charter. However, I take support for my position that the use of private property is a prohibited form of expression from the decision of the Supreme Court of Canada in Committee for the Commonwealth of Canada v. Canada (1991), 77 D.L.R. (4th) 385 (S.C.C.)[ hereinafter "Commonwealth"]. In Commonwealth (supra), the Supreme Court suggested that choosing a public forum of expression can possibly limit the scope of protection under Section 2(b). By analogy, I reason that use of private property to convey expression can also warrant removing the expression from the protection of Section 2(b).

     It is clear that private property cannot be used as a location or forum for expression: As Justice Dickson (as he then was) wrote for the majority at page 83 in the pre-Charter decision of Harrison v. Carswell, (1975), 62 D.L.R. (3d) 68 :

Anglo-Canadian jurisprudence has traditionally recognized, as a fundamental freedom, the right of the individual to the enjoyment of property and the right not to be deprived thereof, or any interest therein, save by due process of law. The Legislature of Manitoba has declared in the Petty Trespasses Act that any person who trespasses upon land, the property of another, upon or through which he has been requested by the owner not to enter, is guilty of an offence. If there is to be any change in this statute law, if A is to be given the right to enter and remain on the land of B against the will of B, it would seem to me that such a change must be made by the enacting institution, the Legislature, which is representative of the people and designed to manifest the political will, and not the Court.

     In fact, the Defendants do not assert a right to hand out anti-Michelin leaflets inside the factory gates. That would constitute a trespass, a clearly illegal or prohibited form of expression. However, the Defendants do argue that their freedom of expression includes the right to use the Plaintiff's property to convey meaning. An early Charter case on this same issue of the use of private property and free expression is New Brunswick Broadcasting Co. Ltd. v. CRTC, [1984] 2 F.C. 410 [hereinafter "New Brunswick"]. Justice Thurlow at page 426 writes:

The freedom guaranteed by the Charter is a freedom to express and communicate ideas without restraint, whether orally or in print or by other means of communication. It is not a freedom to use someone else's property to do so. It gives no right to anyone to use someone else's land or platform to make a speech, or someone else's printing press to publish his ideas.It gives no right to anyone to enter and use a public building for such purposes.

         (emphasis added)

     However, New Brunswick (supra), was decided before Commonwealth (supra), in which the Supreme Court did rule that there is a limited right, under certain circumstances, to the use of public property as a forum for free expression. Even in Commonwealth, however, the Court continued to recognize that private property is not available as a forum for free expression. Justice McLachlin at page 448 was the most unequivocal:

It has not historically conferred a right to use another's private property as a forum for expression. A proprietor has had the right to determine who uses his or her property and for what purpose. Moreover, the Charter does not extend to private actions. It is therefore clear that s. 2(b) confers no right to use private property as a forum for expression.

     Justice McLachlin held at page 449 that the right of free expression on government property is not a given and must meet certain conditions. At pages 455-456, Justice McLachlin specified that the individual asserting such a right of access has to prove that the expression furthers one of the purposes of free expression first defined in Irwin Toy (supra), at page 976 as: (i)seeking truth; (ii) fostering participation in the organs and means of social and political decision-making and (iii) enhancing the diversity of the means of individual self-fulfilment.

     Chief Justice Lamer in Commonwealth did not expressly address the issue of the use of private property but he did draw a distinction at page 393 of his decision between the "quasi-fiduciary nature" of the government's right of ownership and the exclusive rights of the private owner who "benefits personally from the places he owns". Chief Justice Lamer went on to rule that the Court, in determining the scope of the individual's right to free expression on government property under Section 2(b), should first balance the government's interest in public property with the individual's right to free expression on that property. Only if the expression is compatible with the primary function of the property is the expression within the protected sphere of Section 2(b).

     Justice L'Heureux-Dubé in Commonwealth gave the most expansive rights of access to public property and held that any restriction on the time, manner and use of public property had to be justified under Section 1. However, even she recognizes at page 422 in Commonwealth the different and distinct status of private property:

If the government had complete discretion to treat its property as would a private citizen, it could differentiate on the basis of content, or choose between particular viewpoints and grant access to sidewalks, streets, parks, the courthouse lawn, and even to Parliament Hill only to those whose message accorded with the government's preferences.(my emphasis)

     For two reasons, Commonwealth does not bear directly on the particular facts of this case - the issue of the use of copyright as private property and freedom of expression. However, the Commonwealth decision still contains relevant principles of law on the status of private property and the balancing of the parties' interests under Section 2(b). In Commonwealth, the Supreme Court, in various ways, elaborated what Justice McLachlin at page 451 called "a threshold test...to screen out cases clearly falling outside the free speech guarantee before reaching the s.1 analysis." What then are the differences between the facts in Commonwealth and the case at bar? The first difference is that the property in the Commonwealth case was used as a location or forum for the distribution of leaflets and other types of protected expression. The property was being "used" but only as a backdrop for expression and not to convey meaning. Unlike the case at bar, the property was not the vehicle for the Defendants' message. I do agree with Justice Thurlow in New Brunswick (supra), that the Court should reject as out of hand anyone who argues that Section 2(b) gives him or her the right to use without permission the printing press of another, - (more likely a computer in this day and age) - merely because it is used to create leaflets that are legitimately protected as expression. It remains a more open question, however, whether parodic use of a copyright, the copyright itself already imbued with meaning, should be analogous to use of a printing press. The "Bibendum" is not property like a printing press that is devoid of meaning. A printing press is truly only a vehicle for conveying meaning.

     Second, the property in Commonwealth was an airport or piece of public property. The Plaintiff's copyright is private property. The Defendants fought against the usual characterization of copyright as private property and urged the Court to consider the Plaintiff's copyright as a type of state sanctioned private property. The Defendants sought to diminish the "private" nature of the Plaintiff's property rights for a particular reason. They wanted the Court to apply Justice L'Heureux-Dubé's framework in Commonwealth (supra), at pages 429-430 for balancing public property rights and free expression under Section 1 of the Charter to the current case. I have no hesitation in stating that I can find no merit in the Defendants' characterization of the Plaintiff's copyright as a piece of quasi-public property. The fact that the Plaintiff's copyright is registered by a state-formulated system under the aegis of the Copyright Act in no way diminishes the private nature of the right. If one were to extend the Defendants' test of "state sanctioned private property" to its logical extreme, no one in Canada could properly say that his or her house was "private property" since houses are also registered under various province designed systems of land title! I therefore hold that Justice L'Heureux-Dubé's analysis of the balance of public property and free expression under Section 1 is not applicable to the case at bar.

     A further wrinkle in extrapolating from the Commonwealth case is that the entire Supreme Court agreed on the outcome but Justices McLachlin, L'Heureux-Dubé, and Chief Justice Lamer issued three distinct approaches on the subject of public property and the scope of free expression. As Justice Linden stated at page 86 of Weisfeld (supra), "both Chief Justice Lamer and Madame Justice McLachlin, in their separate reasons, suggested that the scope of expression protected under paragraph 2(b) of the Charter may be somewhat different when the expression takes place on government-owned property than in other situations". It is difficult to discern the majority opinion on the methodology for determining the scope of protected expression in the use of public property by a individual asserting a right to free expression. One must carefully read the concurring opinions. Justice Sopinka concurred with the reasons of Chief Justice Lamer in their entirety while Justice Cory at page 446-447 concurred with the same reasons specifically on Chief Justice Lamer's balancing technique under Section 2(b) between the individual's interest in expression and the primary function of the government property. Justices Gonthier and La Forest agreed with several elements of both the reasons of the Chief Justice and Justices L'Heureux-Dubé and McLachlin but they ultimately decided that in future cases, they would adopt the approach of Justice McLachlin. Thus, neither the decision of Chief Justice Lamer nor Justice McLachlin has the numerical edge. Subsequent cases like Peterborough (City) v. Ramsden (1993), 106 D.L.R. (4th) 233 [hereinafter "Peterborough"] and Weisfeld (supra), have considered all three approaches in reviewing the scope of protection for free expression on public property. Finally in Toronto(City) v. Quickfall (1994), 111 D.L.R. (4th) 687 (O.C.A), Justice Abella at page 690 held that Justice Iacobucci in Peterborough (supra), had in fact applied the approach of Chief Justice Lamer in balancing the interests of property owners with the freedom of expression guarantee: "Without disavowing the other two tests proposed respectively by L'Heureux-Dubé and McLachlin JJ., both of whose approaches he reiterated, Iacobucci J. utilized the approach of Chief Justice Lamer." I therefore have adopted by analogy the approach of Chief Justice Lamer in considering the interests of the individual asserting a right of free expression and the use of private property.

     Although I have analyzed in some detail below the facts of this case under Chief Justice Lamer's balancing principle in Commonwealth, I also hold that the Defendants would have failed to prove that their expression was a protected form of expression even under the approach elaborated by Justice McLachlin in Commonwealth. Justice McLachlin acknowledged at page 449 of Commonwealth that "the protection conferred by a right, even prima facie, should not go beyond what can be justified, having regard to the history of the right and the purpose which it serves". Justice McLachlin established a test for when the scope of free expression is to be restricted under the Section 2(b) analysis. She stated at pages 455-456 of Commonwealth, supra, that the individual asserting a right to free expression on public property had to establish a link between the use of the public property and one of the purposes - truth, social participation and diversity of ideas - informing the protection of expression. Once again, this test from Commonwealth is not directly applicable to the case at bar since it concerns the use of public property as a forum for expression but it elaborates a helpful principle for distinguishing the nature of the parties' interests in this case. I agree with the Plaintiff's argument that use of its private property, the "Bibendum" copyright, was hardly consistent with all of the purposes informing free expression. Of course, there was certainly a link between the Defendants' leaflets and brochures that did not depict the "Bibendum" and the value of expression enhancing participation in social and political decision-making. However, one should not confuse the entirely socially acceptable and legitimate overarching goal of the Defendants' unionization activity with their inappropriate and unprotected means of expression under Section 2(b). The Defendants had no need to adopt a form of expression, the use of copyrighted material, that deprived the Plaintiff of its property and actually subverted the third value of promoting the diversity of ideas. In other words, if copyright is not respected and protected, the creative energies of authors and artists in furthering the diversity of ideas will not be adequately compensated or recognized.

     (iv) Balancing Required at the Section 2(b) Stage:

     The Defendants did not lightly dismiss the fact that they have used the Plaintiff's copyright. However, they urged the Court to consider this use as one element in the Section 1 analysis in which the Court has to balance the nature of the parties' interests and rights. The Plaintiff also offered as evidence of the fact that the Defendants' freedom of expression was not restricted the multitude of anti-Michelin leaflets and brochures circulated by the Defendants that did not use the "Bibendum" copyright. The Plaintiff argued that freedom of expression is not impaired if the Defendants can say whatever they like against Michelin (aside from defamatory statements) as long as they do not use CGEM Michelin's property. Once again, the Defendants argued that the possibility of alternate forms of expression only becomes relevant at the Section 1 analysis under the question of whether the Copyright Act is a minimal impairment of the Defendants' right of free expression. The Defendants argued that it is premature under the Section 2(b) part of the Court's Charter analysis to consider the fact that the Defendants can so freely criticize Michelin's corporate policies and make their point without recourse to the Plaintiff's property.

     I disagree with the Defendants' submission that the balancing of the parties' interests is only properly performed in the context of Section 1 of the Charter. Although the Defendants are correct in stating that the balancing of the parties' interests and rights most often occurs in the Section 1 analysis, some balancing, particular when it comes to the use of property, whether public or private, must take place even before the Court undertakes an inquiry under Section 1 to determine if the form of expression is prohibited. Chief Justice Lamer at page 392 in Commonwealth (supra), states:

when a person claims that his freedom of expression was infringed while he was trying to express himself in a place owned by the government, the legal analysis must involve examining the interests at issue.

     I acknowledge that this balancing principle from Commonwealth is not directly applicable to the case at bar since Commonwealth concerned use by a person of public property as a forum for expression. The Defendants have used private property not as a forum but as a means of conveying a message. However, despite these differences, I reason by analogy to Commonwealth that I am permitted to consider the parties' interests even before the Section 1 stage of the analysis in order to examine the scope of the Defendants' freedom of expression under Section 2(b) and determine if the expression is in a prohibited form. I hold that it is reasonable to equate doing something on private property as a forum for expression with using the property - the copyright - to convey expression.

     (v) Interests of the Defendants and the Plaintiff

     I recognize as Chief Justice Dickson stated at page 968 of Irwin Toy (supra), how free expression is "fundamental because in a free, pluralistic and democratic society we prize a diversity of ideas and opinions for their inherent value both to the community and the individual.". The Defendants were anxious to counter the Court's qualms that it would have to make a radical finding that all unauthorized uses of copyrighted material are protected forms of expression. The Defendants urged the Court to consider the particular facts of this case in its consideration of the effects of the Copyright Act on the Defendants' freedom of expression. The Defendants argued that the Court could narrow the ambit of protected expression in its analysis of the effect of the Copyright Act. According to the Defendants, a Court might state that freedom of expression is only restricted when use of the copyright is for non-commercial purposes such as parody of a company symbol by a union during an organization campaign. I agree that the Defendants are distinct in that their expression is for a non-commercial purpose tied to such other fundamental Charter values as freedom of association: (see Professional Institute of the Public Service of Canada v. Northwest Territories (Commissioner) (1990), 72 D.L.R. (4th) 1 (S.C.C)). This is not to say, however, that the union is necessarily a non-commercial body. One cannot give free rein to unions to use the property of another merely because they are in the midst of an organizing campaign. Freedom of expression is not an absolute value: (see Hill v. Church of Scientology of Toronto, [1995] 2 S.C.R. 1130 at page 1173).

     What then is the nature of copyright as private property? Copyright is an intangible property right. The owner therefore has a more challenging task in asserting his or her control over the use of the property. Launching an action for infringement under the aegis of the Copyright Act is the owner's prime tool for asserting his or her rights. But just because the right is intangible, it should not be any less worthy of protection as a full property right: (see Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. , [1964] 1 W.L.R. 273 (H.L.) at 291). It may be easier to focus on the nature of the Plaintiff's property right in the copyright if we imagine the case of an infringer dealing with a painting, a piece of tangible private property that like the copyright is already imbued with meaning. No infringer could credibly allege that freedom of expression gives him or her the right to subvert the content or message of the painting by physically drawing a moustache on the painting. However, what if the infringer asserted the right to copy or substantially reproduce the painting with a moustache? Our instincts might not be so certain about the scope of the infringer's freedom of expression because our perceptions are coloured by the intangible nature of the copyholder's right. We should guard against our instincts in this instance since they might lead us to undervalue the nature of the Plaintiff's copyright and overestimate the breadth of the Defendants' freedom of expression. As Chief Justice Lamer stated at page 395 in Commonwealth (supra), "the fact that one's freedom of expression is intrinsically limited by the function of a public place is an application of the general rule that one's rights are always circumscribed by the rights of others". Rights also bring with them duties. The Defendants cannot logically assert a right to use the Plaintiff's private property within the scope of their freedom of expression, because then the Plaintiff would have a reciprocal duty to give the Defendants' access to this property.

         The Plaintiff argues that the Defendants' use of its property in fact subverts the third value - the diversity of ideas by enhancing self-fulfilment - of expression. Copyright promotes the third value by protecting and providing an incentive for authors to create works of expression because their works will be protected under the aegis of the Copyright Act from unauthorized reproduction. I have no reason to doubt that the Plaintiff is intent on protecting its interest in its copyright against all unauthorized users. The Defendants argue that the "Bibendum" is freely used by both pro and anti-union forces without the permission of the owner by either side in the unionization campaign. However, the Plaintiff submitted evidence that it pursues any party, pro or anti-union, who uses its intellectual property without permission. The Plaintiff offered as evidence on this point memos written by Mr. George Sutherland, in-house counsel for Michelin Canada. Mr. Sutherland had written to plant managers during an earlier unionization campaign in 1986. In these memos, Mr. Sutherland asked the managers to locate who had authored anti-union leaflets depicting the Bibendum. The managers were unable to locate the authors but the Plaintiff' intent on protecting its interests and private property against all comers is apparent.     

     It is now important to consider whether the Defendants' use of the Plaintiff's property is a prohibited form of expression. In Commonwealth at page 396, Chief Justice Lamer held that in instances of use of public property, expression is protected only if it is compatible with the primary function of the property. Thus, no one has a right to set up a peace camp in the middle of a public library because such obstreperous demonstrations would be incompatible with silent study, the prime function of the library. However, a peace camp on the lawn of Parliament Hill would be compatible with the function of Parliament Hill as an arena for public discourse and debate: (see Weisfeld, supra.) If freedom of expression in a public forum is limited by such factors as the function of the place, the conditions and restrictions for using private property should be even stronger. By analogy to Chief Justice Lamer's reasoning on the use of public property, I hold that a person using the private property of another like a copyright, must demonstrate that his or her use of the property is compatible with the function of the property before the Court can deem the use a protected form of expression under the Charter. In the present case, subjecting the Plaintiff's "Bibendum" to ridicule as the object of parody is not compatible with the function of the copyright. A "Bibendum" about to stomp hapless workers into submission does not present the original author's intent of a favourable corporate image or provide an incentive for compensating artists for the integrity of their vision.

     (vi) Summary on the scope of Protection under Section 2(b)

     I agree with the Defendants that the threshold for prohibiting forms of expression is high. Violent forms are certainly at the extreme end but a form need not be violent in order to be prohibited. In Irwin Toy at page 970, Chief Justice Dickson did not "delineate precisely when and on what basis a form of expression chosen to convey a meaning falls outside the sphere of the guarantee." The threshold for prohibiting forms of expression is not so high that use of another's private property is a permissible form of expression. Chief Justice Lamer in Commonwealth (supra), stated that the necessary balancing of the parties' interests in cases of a party asserting the right to use public property occurs before the Section 1 analysis. I have expanded this principle to conclude that a similar but stricter balancing of interests is to occur if the party, like the Defendants in the case at bar, asserts the right to use private property.In the balance of interests and rights, if the Defendants have no right to use the Plaintiff's "Bibendum", they have a multitude of other means for expressing their views. However, if the Plaintiff loses its right to control the use of its copyright, there is little left to the Plaintiff's right of private property. The Defendants seek to extend the scope of their right of free expression to include the use of another's property.

     In 1986 and 1991, the Defendants had also unsuccessfully sought to organize the workers at the three Michelin plants in Nova Scotia. On both occasions, the Defendants had also used the Plaintiff's "Bibendum" copyright without the Plaintiff's permission. At that time, the Plaintiff asserted its rights to the copyright in letters to the Defendants. Now the Defendants are asking the Court to state that their freedom of expression was infringed because the Copyright Act did not permit them to use the "Bibendum" in a parody. Although the case concerned disobedience of an interlocutory injunction, Chief Justice McEachern of the British Columbia Court of Appeal in MacMillan Bloedel Ltd. v. Simpson (1994), 113 D.L.R. (4th) 368 at page 384 made an important point on the scope of freedom of expression: "Repeated, unlawful disregard for the rights of others is not a proper context in which to extend unilateral rights of expression that can already be freely exercised by lawful means". The Defendants in this instance did freely exercise their right to criticize and lampoon Michelin in pamphlets and brochures that did not depict the Plaintiff's property, the "Bibendum".

    

B. What is the purpose and effect of the Copyright Act?

     Under Section 2(b), the Defendants not only have to prove that their expression was protected, they also have the burden of proving that the purpose or effect of the Copyright Act was to restrict their freedom of expression: (Irwin Toy, supra, at page 970). In determining whether the aim of the Copyright Act was to control attempts to convey meaning through that activity, the Court examines if the act on its face seeks to control the content of expression and not merely the physical consequences of expressive conduct. A law that attempts to control the form, and not the content of expression does not interfere with the ability to convey the message by other means: (see Weisfield, supra, at page 90). Only if the purpose is first held not to restrict freedom of expression, does the Court look to the effects of the Act: (see R v. Big M Drug Mart Ltd., [1985] 1 S.C.R. 295 at page 334.) If the purpose is to restrict attempts to convey meaning, then it is unnecessary to look to the effects since according to the broad and content-neurtral definition of expression at the first stage of the analysis, all meaning is protected expression. In determining if the government's action or legislation had an effect on the claimant's freedom of expression, the Court investigates whether the expressive activity at issue promoted at least one of the three purposes underlying freedom of expression: (see Weisfeld, supra, at page 90). Since the Defendants in this instance have failed their initial burden of proving that the right to use another's private property is within the protected scope of freedom of expression, there is no need to proceed with an examination of the purposes or effects of the Copyright Act, the second stage of the constitutional analysis under Section 2(b).

         

     I cannot leave this discussion of the constitutional issues without offering some brief thoughts on the application of Section 1 of the Charter to the Copyright Act and the inappropriateness of the "reading-down" technique in the current case. Even if I am incorrect in stating that the Defendants have not met their burden under Section 2(b) of the Charter by failing to prove infringement of their freedom of expression, I would have held, according to the wording of Section 1, that Sections 3 and 27 of the Copyright Act are "reasonable limits prescribed by law... demonstrably justified in a free and democratic society". The Supreme Court of Canada initially set out the two-stage analysis of Section 1 in Oakes (supra). First, the government or private actor invoking a statute found to infringe a Charter right has to prove that the objective of the impugned statute is "sufficiently important" to warrant overriding a fundamental right: (see Oakes, supra, at page 138). I would have had no difficulty in determining that the objective of the Copyright Act was "pressing and substantial", the test for a sufficiently important objective. The protection of authors and ensuring that they are recompensed for their creative energies and works is an important value in a democratic society in and of itself. As well, the pressing and substantial nature of the Copyright Act's objective is buttressed by Canada's international obligations in treaties like the Berne Convention of 1886 as revised in Berlin in 1908 and in Rome in 1928: Schedule III (Section 71) of the Copyright Act, and Bishop (supra) at pages 473-474.

     Second, the Plaintiff as the party invoking Section 1 would have had to prove that the means for implementing the Copyright Act's objectives were reasonable and demonstrably justified: (Oakes, supra at page 139). There are three prongs to what Chief Justice Dickson in Oakes at page 139 called the proportionality test: (i) rational connection of the law's objectives to the means; (ii) minimal impairment of the infringed Charter right; and (iii) proportion in the effects of the means and the objectives. In performing a balance of the parties' interests in accord with Chief Justice Lamer's principle from Commonwealth (supra), I have already considered many of the elements of the Oakes proportionality test and found against the Defendants' purported right of free expression.

     Suffice it to say that in addition to what was already stated above, the objectives of the Copyright Act are rationally connected to an action for copyright infringement. There is a definite and efficient link between the goal of protecting the interests of authors and copyright holders by granting them a monopoly on the right to use and reproduce their works and the ability to enforce those interests in an action for copyright infringement. The Copyright Act does not prohibit attacks on the authors of works or their ideas. Infringers are only liable for reproducing the work or a substantial part of the same. Copyright also minimally impairs the Defendants' right of free expression by the very well-tailored structure of the Copyright Act with its list of exceptions in Sections 27(2) and (3). In Irwin Toy (supra), Chief Justice Dickson stated at page 999 that the Court should give Parliament a "margin of appreciation" in evaluating whether the impugned act minimally impairs the Charter right in question. In accord with the dicta from Irwin Toy, I cannot lightly substitute what might be my evaluation of the least drastic means for the choice of the Legislature. In any event, I hold that the objectives of the Copyright Act are implemented with a minimal amount of impairment of the Defendants' rights. In fact, in paragraph 34 of the Statement of Admissions submitted June 6, the Defendants admit "that use of "Bibendum" by the defendant on its materials was not the only means by which this Union could convey its message to the workers in the context of the labour organizing campaign." Finally, I find that considering the deleterious effects of the Copyright Act, the third element of the Oakes three-pronged proportionality test, confirms its status as a reasonable limit prescribed by law in a free and democratic society. The Plaintiffs offered into evidence a wealth of union anti-Michelin pamphlets and brochures that did not use the Plaintiff's property in violation of the Copyright Act (Exhibit P-26). A prohibition on using the Plaintiff's "Bibendum" copyright does not therefore create undue hardship for the Defendants in conveying their message to the Michelin workers.

     Even if I had found that the Copyright Act was not saved under Section I, I would have rejected "reading down" Section 27(2)(a.1) of the Copyright Act as an appropriate remedy. In Osborne v. Canada, [1991] 2 S.C.R. 69, Justice Sopinka stated at page 102 that reading down permits a Court to avoid a conclusion of unconstitutionality after it has first determined what elements of the law are incompatible with the Charter:"...in order to determine which interpretation is consistent with the Charter, it is necessary to determine which aspects of the statute's operation do not conform. This requires not only a finding that a Charter right or freedom is infringed but that it is not justified under s.1". In other words, in order to read down, a Court must first be able to precisely determine which parts of the impugned act are constitutionally invalid. The Defendants urged the Court to consider "reading down" only the word "mention" in Section 27(2)(a.1) of the Copyright Act to leave intact the rest of the Section and statute. The Defendants argued that "mention" should be narrowly interpreted to mean in the case of parody an implied reference to the author and source of the original work. I agree with the Plaintiff's submissions that the application of the "reading down" technique is not as straightforward and piecemeal as it is presented by the Defendants. There is no sifting out with precision which sections or phrases from the Copyright Act are constitutionally suspect under the Defendants' analysis. To safeguard the fair dealing exception in Section 27(2)(a.1) in the current case, a Court would have to first "read-in" parody as "criticism". In doing so, the Court would be hardly leaving Section 27(2)(a.1) intact. The Court would be creating a new exception, a role more appropriately undertaken by Parliament: (see Rocket v. Royal College of Dental Surgeons of Ontario, [1990] 2 S.C.R. 232 at page 252). I disagree with the Defendants' submission that the trigger for when reading down "mention" is appropriate can be skewered to the particular and narrow set of facts of a union's parody of a corporate copyright during the course of a recruiting campaign. In effect, reading down under those circumstances would be creating a whole new exception strictly for the benefit of the Defendants. Reading down is an appropriate technique if it serves its goal of minimally intruding on the legislative role.

    

IV. Conclusion

     For the above stated reasons, I find that the Defendants have not infringed the Plaintiff's trademarks nos. 255, 656; 186, 949; and 214, 191.

     For the above stated reasons, I find that the Defendants have infringed the Plaintiff's copyrights nos. 318, 640; 318, 641 and 318, 642 by having copied or by having substantially copied part of the said copyrights without the consent or authorization of the Plaintiff.

     As well, for the above stated reasons, I find that the Defendants' freedom of expression pursuant to Section 2(b) of the Charter has not been infringed.

     The Defendant, the CAW, its officers and directors, its employees or servants and agents, mandataries, sponsors and all those over whom they exercise control and the Defendants Hargrove and Wark are hereby ordered to refrain from reproducing, copying or making any colourable imitations of Plaintiff's "Bibendum" copyright designs; from manufacturing, importing, selling or distributing on handouts, documentation or otherwise, or on any other product, unauthorized copies of the "Bibendum" copyright designs and infringing the Plaintiff's copyrights in the "Bibendum" designs.

     It is hereby ordered that the Defendants, at the option of the Plaintiff, deliver up or destroy, under the oath of one of their authorized officers, within thirty (30) days of the date of the judgment to intervene herein, all offending handouts, advertisements, wares or material, the use or the existence of which would violate any injunction granted herein and provide sworn evidence by an officer of the defendant CAW of same to the Plaintiff, within the same delay.

     It is further ordered that the Defendants are to remit to the Plaintiff, at the Defendants' cost, the possession of all infringing copies of all the aforesaid designs and all plates used or intended to be used for the production of the infringing copies, or the conversion thereof in respect of those copies having been sold.

     It is further ordered that damages, if any, caused to Plaintiff shall be the subject of a separate hearing.

     Costs on a party to party basis shall be payable to Plaintiff.

                         "MAX M. TEITELBAUM"                                  J U D G E

VANCOUVER

December 19, 1996

     NAMES OF COUNSEL AND SOLICITORS OF RECORD

STYLE OF CAUSE:      COMPAGNIE GÉNÉRALE DES ÉTABLISSEMENTS MICHELIN - MICHELIN & CIE

                     - and -

NATIONAL AUTOMOBILE, AEROSPACE, TRANSPORTATION AND GENERAL WORKERS UNION OF CANADA (CAW-CANADA)

                 and BASIL HARGROVE

                 and LARRY WARK

COURT NO.:              T-825-94

PLACE AND DATE          MONTREAL

OF HEARING:              June 11-12, July 12, 1996

                     VANCOUVER

                     Aug. 28-29, Sept. 9, 1996

    

REASONS for JUDGMENT:      TEITELBAUM, J.

DATED:                  December 19, 1996

APPEARANCES:

     Me Jacques A. Léger, Q.C.

     Me Diane Leduc Campbell              for Plaintiff

     Mr. Ronald A. Pink, Q.C.

                                 for Defendants

SOLICITORS OF RECORD:

     LÉGER, ROBIC, RICHARD s.e.n.c.          for Plaintiff

     Montreal, Quebec

     PINK, BREEN, LARKIN                  for Defendants

     Halifax, N.S.

__________________

¹      TMA # 255, 656 is for the right-handed "Bibendum". It was issued on February 6, 1981. The Trade-Mark description states that it has been used since 1973 in Canada in association with tourist guides and maps. TMA # 186,949 for the left-handed "Bibendum" was issued on December 1, 1972. It has been used since January 1975 in association with tires and key chains.

²      TMA # 214, 191 states that the term "MICHELIN" has been used since at least 1938 in connection with automotive-related wares, including maps and tourist guides, and since at least 1975 in connection with clothing and other items.

³      Clairol also pleaded and argued Section 7, the unfair competition provisions of the Trade-marks Act , which is not in issue in the present case.

⁴      Under the World Trade Organization Agreement Implementation Act , S.C. 1994, c. 47, s. 196, Section 20 was amended to include Section 20 (2) which reads, "no registration of a trade-mark prevents a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine or any of the indications mentioned in subsection 11.18(4) in association with a spirit." The indications cited in Section 20 (2) refer to the geographical place names of wines and spirits as further exceptions to infringing use of a registered trade-mark. Section 20 (2) only came into force on January 1, 1996 and was not pleaded in the current case.

⁵      Justice Lesyk of the Quebec Superior Court in St- Hubert did not have to address the meaning of use under Sections 19 and 20 when he examined whether a trade union in that case had used the plaintiff's trade marks during a labour dispute. He did hold that "use" as defined in Clairol had not been altered by subsequent case law. Justice Lesyk at page 467 also stated: "Le terme ou mot "emploi" ou "usage" définit à l'article 2 de la Loi doit recevoir, sauf indication contraire, la même signification ou sens chaque fois qu'il est utilisé dans la Loi." With respect, I cannot agree that the term "use" must receive the same meaning every time it is employed in the Trade-marks Act. Justice Thurlow in Clairol, supra, clearly added a secondary component -the need to also prove "use as a trade-mark" - to the term "use" as it is cited in Sections 19 and 20 since the focus is on the owner's right of exclusive use. This secondary component is absent in Section 22. In other respects, I agree with the holding in St Hubert on the continuing validity of the Clairol decision.     

⁶      In Trade mark # 340, 453, registered on May 20, 1988 for the CAW logo depicted on the union's leaflets, the wares are specified as :"(1) Lapel pins, crests, briefcases, clipboards, pens, notepads, ...." .The services are "services provided by a labour union to its members, namely bargaining services, informational services, educational services, medical services, welfare services, pension services, and the promotion of union fraternity." Trade mark # 333, 624, registered on October 30, 1987 for the acronym "CAW", relates only to services and includes a phrase missing from the description of the services for the CAW logo since it includes "the promotion of union fraternity amongst the members of the union, with other unions, and with non-members."

⁷      The relevant portions of Section 6 read:          (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.          (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including          (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they          have become known;          (b) the length of time the trade-marks or trade-names have been in use;          (c) the nature of the wares, services or business;          (d) the nature of the trade; and          (e) the degree of resemblance between the trade-marks or trade-names in          appearance or sound or in the ideas suggested by them.

⁸      "F.S.R." stands for "Fleet Street Reports", a British reporting series for intellectual property decisions.

⁹      In Ludlow , the song in question was "This Land is Your Land" by Woody Guthrie, in MCA the song was "Downtown", and in ATV the song was "Revolution" by the Beatles.

¹⁰      Justice Kennedy filed a concurring opinion.

¹¹      Section 107 reads:      Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phono records or by any other means specified by that section, for purposes such as criticism, comment, newsreporting, teaching (including multiple copies for classroom use) scholarship or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:
     (1)the purpose and character of the use, including whether such use is of a commercial nature or is for      nonprofit educational purposes.      (2)the nature of the copyrighted work;      (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole;      and      (4)the effect of the use upon the potential market for or value of the copyrighted work.

¹²      See also Lesley Ellen Harris, Canadian Copyright Law (Toronto:McGraw-Hill Ryerson, 1995) at 124 who cautions against using the American concept of "fair use' interchangeably with the distinct Canadian notion of "fair dealing".

¹³      Under Section 57 of the Federal Court Act ,R.S.C. 1985, c. F-7, the Defendants had to give notice to the federal and provincial authorities of their constitutional challenge of the Copyright Act. None of the government bodies chose to intervene.