Union ordered to stop use of parody TV commercials

In TELUS Corporation v Telecommunication Workers Union (Vancouver Registry Case S040478), the British Columbia Supreme Court has granted an interlocutory injunction to restrain the Telecommunication Workers Union (TWU) from broadcasting television commercials criticizing TELUS, which were parodies of TELUS's own commercials.

TELUS is the largest telecommunications company in Western Canada. It uses a particular look and feel for its television commercials and other advertisements. The commercials usually feature:

• a clean white background;
  
  
• animals doing whimsical things;
  
  
• upbeat music; and
  
  
• text at the end in a particular font, in the colours green and purple.

The TWU is the certified bargaining agent for employees of TELUS's main operating subsidiary, TELUS Communications Inc. The two have been without a collective agreement for approximately four years. On a number of occasions the TWU has made statements critical of TELUS through various means. A number of these statements make reference to quality of service issues and encourage people to report service problems to the Canadian Radio-television and Telecommunications Commission - the broadcast regulator in Canada.

In about the middle of January 2004, the TWU began airing three commercials that used a similar look and feel to the TELUS commercials. In particular, the TWU commercials had a clean white background, animals, music and text at the end predominantly displayed in green and purple. The animals were a pig, a parrot and Dalmatians. There were several points of departure from the TELUS ads, however, including a voiceover in which the pig stated: "TELUS customers are getting the shaft" and the parrot stated: "TELUS customers are getting plucked".

TELUS commenced a lawsuit for breach of copyright and passing off. It also applied for an injunction pending trial to restrain the TWU from (i) broadcasting or publishing anything that would infringe its copyright, and (ii) passing off, in any way, its messages as being endorsed or approved by TELUS. The injunction sought did not seek to restrain the TWU from distributing messages about TELUS, only from using TELUS's intellectual property (IP) as a launching pad for its messages.

There have been a number of similar cases in Canada in which unions have used the employer's IP as a means of criticizing the employer. The courts have consistently held that, while they will not restrain free speech, they will not allow the employer's IP to be used without its consent.

TELUS argued that the test for injunctive relief in British Columbia, particularly in relation to irreparable harm, is as set out by the British Columbia Court of Appeal in AG (BC) v Wale ((1987) 9 BCLR (2d) 333). In that case, the court stated: "It is important to note that clear proof of irreparable harm is not required. Doubt as to the adequacy of damages may support an injunction". The TWU argued that the test is higher in IP cases and relied on a line of authority from the Federal Court of Canada: Centre Ice Ltd v National Hockey League et al ((1994) 53 CPR (3d) 34 (FCA)). In that case, it was held that there must be clear evidence that irreparable harm will result to the applicant if an injunction is not granted.

The British Colombia Supreme Court concluded that TELUS had made out a prima facie case of copyright infringement and passing off, and that without an injunction TELUS would suffer irreparable harm. It did not specify which test for irreparable harm was correct, but ruled instead that TELUS had met the higher burden so it was not necessary to determine which test applied.

Accordingly, it granted the requested injunction largely on the terms sought.

David Wotherspoon and Matt Ghikas, Fasken Martineau DuMoulin LLP, Vancouver