Tue May 17 09:49am EDT
Walk around any city with an NHL playoff team, especially one as puck-mad as Montreal, and you'll see businesses displaying signs and slogans in support of the local hockey heroes.
It's what Fadl Issa, owner of Lebanese fast food Basha Restaurant on Drummond and Ste-Catherine, thought he was doing in placing a large banner on the side of his building — featuring a mustached man slicing shawarma while wearing a Montreal Canadiens jersey.
But the NHL thinks that enthusiasm is actually trademark infringement, and has demanded Issa pay $89,000 for his use of the Habs' logo and "Go Habs Go" slogan.
Issa quickly received a letter from an NHL lawyer telling him he was violating league copyrights and to remove the banner. At first, he simply painted over the Canadiens logo on the shawarma slicer's jersey, but another letter quickly followed in January telling Issa that "Go Habs Go" also represents a trademark.
So Issa painted over the message at the bottom of the banner, before finally deciding in March to simply take the banner down. Then, he received a letter from the NHL demanding $89,000, or $1,000 for every day the banner was up.
According to the Canadian Press, Issa pled his case to NHL lawyer Francois Larose, claiming that other merchants have used Canadiens signs and slogans. Instead, he was hit with the bill.
Is the NHL right or wrong here?
This isn't the first case in which the NHL has gone after a Canadian-based business for using team logos and slogans. In early May, Kingsway Honda in Vancouver was ordered to remove a Vancouver Canucks logo and a "Go Canucks Go" sign from its window. Which was odd, because Honda is the official car company of the NHL ...
The dealership refused to take down the entire display, removing the logo and a few letters so it read "GO 'Nucks GO" instead, which appeared to resolve the issue.
Issa removed his banner … but he told the CP he's not paying the NHL's fine.
"I said, 'Wow, to do publicity for the Canadiens costs you $89,000.' That's crazy, that's unbelievable," he said. "We cannot afford this kind of money and we're not going to pay it."
Blogger Alan Wexelblat sees this as the NHL "suing one of its biggest fans." He writes for Copyfight, a site that covers inequities in copyright law and enforcement, and opined:
Presumably, the NHL would like to do everything in its power to discourage enthusiastic fans because that strategy worked so well for the RIAA.
In anticipation of receiving my own cease-and-desist letter I will keep this entry devoid of any pictures of hockey, fans, jerseys, logos, or slogans that the NHL might think of as its Precious.
An argument can be made that if there is an official sponsorship relationship with a competing local business, then the trademark enforcement is valid — if one car dealership is paying to get its name on the boards at the rink, it shouldn't have the dealership down the road using logos to "support the team" (i.e. promote its product on the sly).
That doesn't seem to be the case in Montreal, unless there's an Official Shawarma of the NHL we haven't heard about.
Is there a difference between protecting trademarks from being used, say, on unofficially licensed knockoff products and protecting them when local businesses use them as Basha did? We'd say yes.
Does the Basha banner or the car dealership sign confuse the consumer into thinking the local team has endorsed that business? We'd say no.
The NHL and the Canadiens have every right to protect their brands; but in the end, does it hurt the brand more to be this seemingly petty about protecting it?