Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411 travelbuys.ca), 2015 FC 19 (per Manson J.)
January 7, 2015
David Alderson and Nick Poon for the Plaintiff
Evan Tingley for the Defendants
The Plaintiff had operated an online travel business since 2004, offering information and booking services through its website redtag.ca. The Plaintiff had three registered trademarks “redtag.ca”, “redtag.ca vacations” and “Shop. Compare. Payless!! Guaranteed”.
The Defendant 411 Travel Buys was formed in 2008 by the personal defendant, Carlos Lourenco, and its website -- 411travelbuys.ca -- was operational by January of 2009.
In January of 2009, the owner and director of the Plaintiff purchased the domain name “411travelbuy.ca” utilizing his wife’s name as the registrant. As found by the Court, he did so with the express intention of selling to the Defendants for a profit.
Subsequent to the website 411travelbuys.ca going online, the Plaintiff discovered that the metatags included “red tag vacations” and “shop, compare & payless”. The founder of the Plaintiff contacted the personal defendant Lourenco on March 10, 2009 and demanded the metatag content be removed. The Defendant’s website was taken down entirely and the allegedly infringing content removed by mid March 2009.
In March of 2009, after learning of the Plaintiff’s founder purchasing the 411travelbuys.ca domain name, the Defendant registered the domain names redtagspecials.ca, redvacations.ca and 411redtagbuys.ca. These were blank domain names with no capacity to redirect web traffic.
On August 20, 2009, the Plaintiff sued for trademark infringement, copyright infringement, passing off and depreciation of goodwill. The Defendant filed a defence and counterclaimed for passing off.
The Court found that:
- No copyright subsisted in the Plaintiff’s combination of title, description and key word metatag as used by the Defendant;
- The Defendants (both corporate and personal) use of metatags did not constitute copyright infringement;
- Use of the red label trademarks did not constitute trademark infringement, depreciation of goodwill or passing off;
- The counterclaim was dismissed;
- The registration of the 411travelbuy.ca website by the Plaintiff’s director was evidence of bad conduct.
Manson J. explored the relationship between metatags and copyright, and cited authority for the proposition that when the selection of elements entering into the work are dictated by function or law, and their arrangement is not original, the combination of elements will not have sufficient originality to warrant copyright protection. The metatags in question were substantially derived from a list of Google key words and there was little evidence of skill and judgment in creating the metatags, or originality in compiling data. The Court notes that “in some cases there may be sufficient originality in metatags to attract copyright protection when viewed as a whole”, but noted that “the substance of the metatags asserted by the Plaintiff in this case does not meet the threshold required to acquire copyright protection in Canada”.
The Court further found that even if copyright could subsist, there was not substantial copying.
Turning to trademark issues, the Court noted, “use of a competitor’s trademark or trade name in metatags does not, by itself, constitute a basis for a likelihood of confusion”. The Court noted that metatags do not direct a consumer to a particular website, and that in this case, there was no use of any of the Plaintiff’s trade names or trademarks on any visible website.
Similarly, since a trademark is deemed used when it is used or displayed in advertising services, the Court found that the use of the Plaintiff’s trademarks in metatags did not constitute trademark infringement. Since there was no visible use of the Plaintiff’s trademarks, there could be no depreciation of goodwill.
The Court reviewed the relevant legal principles and found no basis to find personal liability against Mr. Lourenco, the founder of the corporate Defendant. It noted “he appears to have acted in good faith and without any knowing or willful disregard for the Plaintiff [sic] trade name and trademark rights, or any other property rights of the Plaintiff’s”.
By Shaun B. Cody, New Horizon Law