Guarding a cultural icon: concurrent intellectual property regimes and the perpetual protection of Anne of Green Gables in Canada.

• Author: Slane, Andrea

This article uses the various intellectual property protections afforded to the classic children's novel Anne of Green Gables as a means of illustrating the blurring between copyright, trademark, and official marks regimes in Canada. By not keeping these regimes distinct, the author argues, Canadian intellectual property law seriously threatens the integrity of the public domain, a central means by which an appropriate balance is struck between the interests of authors, other cultural producers, and the public at large. The blurring between regimes is located in three conceptual sites: origin in copyright versus source in trademark; reputation in copyright versus goodwill in trademark; and the weak requirement that a public authority serve a "public benefit" in order to qualify for official marks protection, without any consideration of the public interest served by the limitations on protections built into the other intellectual property regimes. Reinforcing the distinctions between regimes and clarifying the public benefit requirement for official marks would help protect, the public domain from unjustified encroachments that potentially deprive us of access to creative works of shared cultural significance.

Faisant reference aux differentes protections en matiere de propriete intellectuelle dont beneficie le livre pour enfants Anne aux pignons verts, cet article met en evidence le brouillage des lignes entre les regimes canadiens de droit d'auteur, de marque de commerce et de marque officielle. L'auteure soutient qu'en ne maintenant pas ces regimes distincts l'un de l'autre, le droit canadien en matiere de propriete intellectuelle menace serieusement l'integrite du domaine public, qui est essentiel au juste equilibre entre les interets des auteurs, des autres producteurs culturels et ceux du grand public. Le brouillage entre les regimes survient a trois endroits conceptuels : origine en matiere de droit d'auteur versus source en matiere de marque de commerce ; reputation en matiere de droit d'auteur versus achalandage en matiere de marque de commerce ; et la faible exigence selon laquelle une autorite publique doit contribuer au > afin d'etre eligible a la protection du regime des marques officielles, sans aucune consideration de l'interet public servi par les limites a la protection qui sont integrees aux autres regimes de propriete intellectuelle. Le fait de renforcer la distinction entre les regimes et de clarifier l'exigence de bien public en matiere de marques officielles contribuerait a proteger le domaine public des empietements injustifies qui nous privent potentiellement d'acces aux oeuvres creatives d'importance culturelle partagee.

Introduction I. Concurrent Protection: Judicial Commentary on the Value of Keeping Intellectual Property Regimes Distinct II. Blurring of Copyright and Trademark. I: Slippage between Origin and Source A. Origination in Copyright and Source in Trademark B. The Trademark Prohibition against die Registration of Proper Names of Living or Recently Dead Persons C. The Murky Legal Terrain of "Merchandising Rights ": Derivation in Copyright versus Source in Trademark III. Blurring of Copyright and Trademark II: Slippage between Reputation and Goodwill A. Reputation in Copyright and Goodwill in Trademark B. Proper Names Revisited: Moral Rights and Personality Rights C. Merchandise Licensing and Goodwill in a Trademark IV. Mighty Marks: Lack of Correspondence between the Public Interest in Copyright and the Public Benefit in Official Marks A. Protecting the Public Domain in Copyright B. Official Marks Protection and die Public Benefit C. Protecting Cultural Icons from Public Misuse--Of Benefit to the Public? Conclusion Introduction

A copyright-protected work that also operates as a trademark is entitled to concurrent intellectual property protections from both regimes. This fact is not controversial. However, concurrent protection does not mean that these regimes can or should cover the same terrain. For if trademarks can provide copyright-like protection--that is, if the distinctions between the two regimes are. lost--then the expiration of the copyright term could have no effect on the rights of the owner who also used the work as a trademark. (1) Such an approach would essentially deprive the public domain of the work and would undermine the rationale of a limited copyright term. Similar dangers arise from use of official marks to limit access to creative works that copyright law has relegated to the public domain.

Blurring the distinctions between intellectual property regimes in Canada causes detrimental effects on free public use of culturally-significant creative works. The various intellectual property protections guarding Anne of Green Gables (Anne), the classic Canadian children's novel first published in 1909, can serve as an instructive example of this phenomenon, because the novel and its main character are undoubtedly national cultural icons, and because the author's heirs and the province of Prince Edward Island (PEI) have been particularly tenacious when exploring how they might maintain ongoing control over the book and its characters after the expiration of copyright.

The timeline for intellectual property protection of the novel begins with the copyright protection the novel enjoyed (in the hands of publishers and finally the author's heirs) for eighty-three years until 1992, fifty years after the death of author Lucy Maud Montgomery. In 1990, David and Ruth McDonald, Montgomery's heirs (Heirs), filed trademark applications for the title ANNE OF GREEN GABLES in plain and stylized form for wares including a "series of books" and "films, video tapes, storybooks, recordings, journals, posters and diaries" and services including entertainment services rendered through the media of films, theatre productions, television, and sound recordings. (2) A few months after copyright expired, the province of PEI (where the novel is set) requested that public notice be given under section 9(l)(n)(iii) of the Trade-marks Act for a series of Anne-themed official marks, including the title ANNE OF GREEN GABLES. (3) Following embarrassing public disputes with the Heirs, the province joined forces with them to form the Anne of Green Gables Licensing Authority (Anne Authority), a corporation acting as a "public authority" for the purposes of the Trade-marks Act. (4) The Anne Authority subsequently requested that public notice be given to a long list of additional official marks for character names used in the novel, as well as the name of the novel's fictional town Avonlea.

These trademark applications and requests for public notice of the adoption and use of official marks were timed to stave off the effects of the expiration of the copyright term, which would have prevented the Heirs (and the province) from exercising control over the booming Anne-themed tourist industry, a major source of jobs and income for the province. The Heirs and Anne Authority have been largely successful in asserting ongoing control over this industry because of the lack of clarity about the different protections afforded by copyright, trademark, and official marks. This confusion of regimes is exacerbated by the fact that the novel enjoyed concurrent protections for the last two years of the copyright term, and that the licensing practices initiated under the copyright regime have to a large extent carried on unchanged under the post-copyright licensing scheme.

Confusion about the boundaries between copyright and trademark arises in two main areas: (1) blurring the difference between origin in copyright and source in trademark; and (2) blurring the difference between reputation in copyright and goodwill in trademark. Further blurring between copyright and official marks is enabled by (3) insufficient consideration at the time of granting and enforcing official marks protections of the purpose of each regime in relation to the other, especially with regard to the meaning of "public benefit" in the assessment of entitlement to official marks protection.

Each of these three concerns will be examined in turn below; the article proceeds from the starting point that retaining the integrity of the process of ascribing a work to the public domain will require careful differentiation between each regime. This does not mean that trademark protection should not be available to current or former copyright owners where appropriate, or that official marks should never be granted in relation to marks currently or formerly also protected by copyright. Instead, clearer parameters need to be reinforced around what exactly each regime protects, and to distinguish this protection from that afforded by the other regimes. Without clear distinctions we eviscerate the fundamental premise of broad but time-limited intellectual property rights (copyright) by way of the regimes that are intended to afford narrower, mainly commercial protections for potentially unlimited duration (trademark and official marks).

1. Concurrent Protection: Judicial Commentary on the Value of Keeping Intellectual Property Regimes Distinct

   The Supreme Court of Canada (SCC) has considered the extent of overlapping protection afforded by different intellectual property regimes twice in recent years: in 2005, the Court considered whether trademark law could be used to extend patent-like protection beyond its expiration in Kirkbi AG v. Ritvik Holdings Inc., (5) and in 2007, the Court considered whether copyright law could prevent the parallel importation of products bearing copyright-protected logos (a practice not prohibited by trademark law) in Euro-Excellence Inc. v. Kraft Canada Inc. (6) In both cases, the justices provided general statements about the significance of the distinctions between the patent, copyright, and trademark regimes. In Kirkbi, a unanimous Court clarified the distinctions between patent and trademark protection...