By Burtley Francis and Michael MacIsaac

You remember Left Shark…

The Super Bowl is a lot of things to a lot of people and is arguably the most anticipated event of the year that is not a holiday (officially). For some it is anticipation of experiencing the “must-see” commercials. For others it is the anticipation of the biggest football game of the season. However, for at least the 118 million people who watched Super Bowl XLIX, this Sunday everyone is holding onto hope to experience the next Left Shark.

You remember Left Shark. As Katy Perry stole the show with a medley of Teenage Dream and California Girls, Left Shark was lost in a world of his own, flailing his fins about in an unchoreographed mess that resembled… well, a fish out of water. At that point Katy Perry did not jump the shark, but instead rode it to take the internet by storm.

The Fallout

The most surprising part of Left Shark’s fishy performance was not the fact that it received about twice as much peak attention on social media than did the game’s actual participants. Instead, it was the debate on copyright infringement and brand protection that followed.

Almost immediately afterwards, political sculptor Fernando Sosa started selling 3D-printed Left Shark figurines online. Almost immediately after that, Mr. Sosa received a cease and desist letter from Katy Perry’s lawyers, in which they argued that Mr. Sosa did not have permission to use the copyrighted image of Left Shark. Ms. Perry’s lawyers then attempted to trademark Left Shark, yet were denied on the basis that the proposed mark only identified a particular character falling short of the legal requirement for the mark to distinguish a particular good or service (i.e. Ms. Perry’s musical services) from any others. Mr. Sosa’s figurines are still available for purchase today.

Now that Left Shark is back in the news today, as we prepare for whatever Super Bowl 50 has in store, it is the perfect time to reconsider a very important question: what can you do to protect your brand here in Canada?

Copyright: Your Best Friend You’ve Never Met

In Canada, the concept of a copyright under our Copyright Act is relatively simple: you have the exclusive right to produce, reproduce, publish or perform any original literary, artistic, dramatic or musical work. For example, once you write a book, create a pamphlet, or take a photograph, you are automatically vested with the sole right to deal with that piece of work (although it is also possible to register it with the Canadian Intellectual Property Office as proof that you have created it). From there, you can keep that right to yourself, you can sell it to others, and you can stop others from using it if they do so without your permission. This protection lasts until 50 years following your death.

However, Left Shark is a prime example of how convoluted the concept of copyright can become. The first thing worth knowing is that ideas are not subject to copyright; it is the depiction of those ideas that is protected. Therefore, the fact that Katy Perry had an idea to use a shark in her dance routine does not mean that everyone else is now forbidden from dancing with sharks. What it does mean is that everyone else might be forbidden from using the likeness of Left Shark if it qualifies as a literary, artistic, dramatic or musical work. The same would be true if you created a pamphlet for your business: the idea behind the pamphlet cannot be protected by copyright, but the design and layout of it could be.

This became a point of contention among Left Shark legal commentators. The dance routine was copyrightable, and the songs Katy Perry was singing was copyrightable, but was the same true of Left Shark? Was the costume a piece of art?

This is a perfect segue into the second thing worth knowing about copyright. Whether something is protected by copyright can depend on two additional factors: a) the use for which that thing is created and b) how many times it is reproduced. Under the Copyright Act, this often comes down to whether something is a “useful article.” The easiest example is clothing. Clothing is a useful article because it is more than just an artistic creation – it keeps us warm in the winter and protects our skin in the summer. Other examples could include kitchen utensils, furniture, or vehicles. Once something becomes useful, the Copyright Act says that it is not an infringement of copyright to reproduce it if that thing is produced by the copyright holder more than 50 times (unless your design is distinctive enough to be protected under certain exceptions in the Copyright Act, e.g. some t-shirt designs, or under the Industrial Design Act – be sure to investigate this possibility if you are in the business of designing and producing items for sale).

The rationale is that the production of items that provide a tangible benefit to Canadians should not be treated the same as purely artistic works. However, this creates an unusual system whereby the design of a useful article is subject to copyright so long as only 49 of them are made. Once you put the 50th useful article on the shelves, your copyright in its design runs the risk of being extinguished.

This is where the story of Left Shark provides a useful example. At the end of the day, Left Shark is a piece of clothing. Therefore, despite its less-than-practical design for business meetings or snow-shoeing, it could constitute a useful article and therefore could lose copyright protection once its owner made more than 50 of them.

If this seems strange, it’s because it is. Paul Heald, Professor of Law in Illinois, summed up the useful article distinction as follows: “why should an otherwise protectable soft sculpture, like our large plush shark, be rendered unprotectable just because we hollow out the inside to fit a person and add some legs?” And that is the interesting point: once an item becomes more than a piece of art, it might be fair game. In a world of ever-growing technology where Left Sharks can be reproduced and sold with the simple click of a 3D printer, it is now more important than ever to have a plan in place before doing business with designs.

Trademarks: The Missing Piece

This discussion on copyright might leave you feeling a bit confused. You may be asking, “Why can’t I use the Nike swoosh on my clothing if clothing can’t really be subject to copyright?,” or as Elizabeth McCaughey once asked back in 1994, “Why can’t I use my last name to sell McCoffee?”

The answer is trademarks. Trademarks are the other important layer in putting together a plan to protect your business and your brand. Simply put, trademarks are a combination of letters, words, sounds or designs that distinguish your company from another one. Trademarks are unique to you, which is important because over time, a trademark can start to represent the value of what it is you produce and your reputation in the global community. The Nike swoosh and the golden arches are just two examples of unique images that have instant meaning in a way unique to those companies.

As with copyright, trademarks provide you with the exclusive right to use a design and the ability to stop others from using if they try. However, they are different from copyright in that protection is not automatic; trademarks must be registered with the Canadian Intellectual Property Office before those exclusive rights become yours. The term is also shorter – 15 years – although that term can be renewed.

Again, Left Shark is a prime example of both the process and the meaning behind trademarks. Shortly after Mr. Sosa started selling his figurines, Katy Perry applied for trademarks over the design of the Left Shark costume as well as the phrase “Left Shark.” As part of that application, her lawyers submitted drawings of Left Shark and a very detailed description of his anatomy, right down to his number of gills and the shape of his eyes.

The U.S. Trademark Office refused to provide trademark protection to Left Shark on the basis that it “identifies only a particular character” and “it does not function as a service mark to identify and distinguish” Katy Perry’s services from those of other musicians. Put another way, people do not necessarily look at Left Shark and associate it with Katy Perry. They look at Left Shark and think of… well, Left Shark.

Despite the fact that trademark registration was refused, this goes to show the importance in using trademarks to protect your brand. What started as a bit of unscripted entertainment turned into a legal battle over protecting the image of a musician. The same can apply to your business. While your business name or logo might need some time to build up value, registering them as trademarks is essential to protecting that value once it happens. Again, the process can be somewhat complex and technical, yet setting yourself up for success at the outset is much easier than trying to set up your dominos on the fly once they start falling into place.

Lessons from Left Shark

Entertainment value aside, Left Shark should be a reminder of both how important it us to protect your brand, and how quickly a failure to protect your brand can sneak up on you. Great ideas require great execution, and in an ever-connected world, the execution is more nuanced and more important than ever before. The legal framework is complex, and it is not always as simple as thinking of an idea and putting it on paper. Left Shark is but one example. Do your homework when it comes to turning your designs into a business, and always consider how copyright and trademarks might apply to your venture to make sure you are protected from the copycats (or copysharks) that are sure to be circling.

_{The information available in this article is provided for general information purposes only. Nothing contained on this website is legal advice or constitutes a legal opinion. This article does not create a lawyer-client or any other legal relationship with, or duty owed to, any party. While it is our goal to provide information which is current, legislative changes and court decisions, among other matters, may result in some information no longer being current or accurate. You should consult a lawyer before relying on any information.}

 The phrase “jump the shark” stems from the TV show Happy Days where in an episode near the end of the series’ run the main character jumps over a shark on water-skis. The phrase is used to describe the singular moment in a show or series where it begins a decline in quality and has strayed irretrievably from its original formula.