Toronto Transit Counsel Wants Trademark to Control Subway Anagrams

(Original image from: BBspot)

A series of subway maps that contained remixed anagrams of the stops and locations on those maps has prompted a series of backlash from various transit authorities. In England the maps have been blocked on the Internet. In Toronto, the bloggers responsible for the maps have been threatened by lawyers from the Toronto Transit Counsel with a cease and desist letter.

Typically this is the action taken by holders of a mark who want to amicably enjoin use of a similiarly confusing mark. In this case, however I do not see how any reasonable person would confuse "Only Booger" with "Central Station." In fact, I believe that the anagrams would likely fall within one of the permissible limits of trademark use, either as a parody or under the limits of trademark use. As described on Chilling Effects the limits of trademark law likely applicable here are:

"Fair Use - there are two situations where the doctrine of fair use prevents infringement:
1 - The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
2 - Nominative fair use. This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant’s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
a - his/her product or service cannot be readily identified without pointing to the registrant’s mark
b- he/she only uses as much of the mark as is necessary to identify the goods or services
c - he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant
Parody Use - Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
Non-commercial Use - If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially. "

Certainly the anagrams are a non-commercial use. They are not being sold for money, are viewable by all with an internet connection and do not purport to compete with any of the transit authorities. These are likely a parody for the anagrams convey a definite sense of originality, while basing itself completely off of the Transit maps already in circulation. As mentioned above, I do not think people would think the that the Transit authority is issuing maps of "Hose Burner" or "Butt Rash" stations. The parody in this case is serving a valuable critical function, which would likely be protected by the First Amendment in the U.S., although may not be as strong a defense in Canada.

I think that a definite analogy to the L.L. Bean v. Drake Publishers can be made in this case b/c although the Transit authorities do have trademark rights in their map, these rights do not entitle them to quash the unauthorized use of that mark by a blogger who is simply communicating ideas or expressing points of view. As the court in L.L. Bean stated: "[T]rademark is not property in the ordinary sense but only a word or symbol indicating the origin of a commercial product. The owner of the mark acquires the right to prevent the goods to which the mark is applied from being confused with those of others and to prevent his own trade from being diverted to competitors through their use of misleading marks." The blogger in this case seems to be communicating the creative ideas in the exercise of jumbling the words of a map to create a humorous expression. Also, as stated on this site, there are many problems with the Toronto subway over the years that commuters are fed up with. This anagram map could be viewed as an expression of the ridiculousness with which transit authorities respond to problems. Of course this last argument is unlikely to hold up b/c the blogger who makes these maps does them for stations around the world so unless he is making a general statement/criticism about mass transit this second rationale won't apply.

It should be noted that although courts recognize the defense of parody the contours of the defense are not always so clearly defined. For instance in Coca-Cola Co. v. Gemini Rising, Inc. the court enjoined Gemini from continuing to sell a poster that said "Enjoy Cocaine" an obvious and blatent parody of the Coca-Cola ad campaign "Enjoy Coca-Cola." I think that this case can be distinguished from Coca-Cola (as well as the L.L. Bean case) in the sense that the Coke mark was being used for commercial purposes (selling posters and t-shirts) and was so similar as to possibly cause tarnishment. The subway anagrams, however are not created for any commercial and merely serve as an expression of word play. Also, there is not the negative connotation involved with creating silly anagrams (regardless of any possible critical function) that is present in equating the Coke identity with that of a dangerous controlled substance. In sum, I think that the parody of the anagram maps is a permissive parodic use (at least under U.S. standards) that should recieve protection and be allowed to continue.