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Trademark jurisdiction becomes focus of Cleveland Indians’ Ontario court case

Just before last year’s American League Championship Series, Mr. Cardinal filed applications with the Human Rights Tribunal of Ontario and the Canadian Human Rights Commission, objecting to the Indians’ team name and its logo, Chief Wahoo, a cartoon depiction of a native with red skin, a hooked nose and toothy grin.

Mark Duncan/The Associated Press

When the Blue Jays fly to Cleveland later this month for a three-game series, it will be the last time Toronto plays Cleveland this regular season.

Meanwhile, a legal battle, launched when the teams faced off in last fall's baseball playoffs, will likely last beyond this season, after a move to a higher judicial court could add several months to the proceedings.

The latest twist in the discrimination complaint, initiated by Canadian architect Douglas Cardinal against the Cleveland club, came because lawyers for Major League Baseball are challenging whether the province's human-rights tribunal has jurisdiction over use of a federal trademark.

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The case started when Mr. Cardinal complained that the Cleveland team's name and logo were offensive to an Indigenous person such as him. It has now snowballed into a legal debate over whether the use of registered trademarks can be restricted by the courts, and whether a U.S.-based sports franchise provides services in Ontario.

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"It is an interesting tangle of legislation that's worth watching," said Teresa Scassa, a University of Ottawa law-school professor.

Just before last year's American League Championship Series, Mr. Cardinal filed applications with the Human Rights Tribunal of Ontario and the Canadian Human Rights Commission, objecting to the Indians' team name and its logo, Chief Wahoo, a cartoon depiction of a character with red skin, a hooked nose and toothy grin.

The application to the Canadian Human Rights Commission – because broadcasting of the games, by Rogers Communications Inc., is under federal jurisdiction – has yet to be heard.

Before the Human Rights Tribunal of Ontario – a provincial body – lawyers for Rogers and Major League Baseball argued that the HRTO did not have jurisdiction over the Cleveland team's ability to use its trademarked name and logo.

Cleveland is among several professional sports franchises with registered trademarks in Canada (the Atlanta Braves, another baseball club with much-criticized iconography, are not trademarked in Canada but the Washington Redskins football team is).

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Prof. Scassa, the author of a book on Canadian trademark law, said trademarks are negative rights, allowing the holder to stop others from using their logos and brands. But, she noted, that does not guarantee the trademark holder from using it without any conditions.

In an interim decision on May 23, the HRTO vice-chair adjudicating the Cardinal complaint, Jo-Anne Pickel, echoed that view. "This right is not immune from both federal and provincial laws of general application," she wrote, alluding to past court rulings that have upheld restrictions on the advertising and packaging of tobacco products.

Lawyers for MLB filed an application in Ontario Superior Court last week to review that May 23 decision, saying that "a registered trade-mark has associated with it a right to use the trade-mark in addition to a right to exclusivity."

In an interview, Tamara Céline Winegust, a lawyer at Bereskin & Parr, a firm specializing in intellectual-property law, said that it remained an open question whether provincial tribunals or legislatures could issue orders that have an impact on a valid federally registered trademark.

While the Supreme Court of Canada ruled in 2007 that restrictions on tobacco advertising and sponsorships were justified limits on freedom of expression, the ruling did not deal specifically with trademarks, Ms. Winegust noted.

Lawyers for Mr. Cardinal say trademarks are not relevant to the case. The issue, they say, is whether the team provided a service, which would place it within the ambit of the Ontario Human Rights Code.

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"The Human Rights Tribunal of Ontario has jurisdiction to determine whether or not displaying an image or a word in the delivery of a service is discriminatory," one of Mr. Cardinal's lawyers, Rebecca Jones, said in an interview.

The team has denied it provides a service in Ontario, portraying itself as a guest of the Blue Jays and noting that it does not sell the tickets to games in Toronto.

Ironically, the team's federal trademark registration information shows that the Indians' name and the Chief Wahoo logo, are described by the team as associated with merchandising and providing "entertainment services."

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About the Author
National reporter

Tu Thanh Ha is based in Toronto and writes frequently about judicial, political and security issues. He spent 12 years as a correspondent for the Globe and Mail in Montreal, reporting on Quebec politics, organized crime, terror suspects, space flights and native issues. More

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