Realtor up in arms about copycat ad, but does he have an IP claim?

Intellectual Property /
John Simpson
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By Tony Poland, LegalMatters Staff • A lawsuit alleging a Hamilton realtor stole a signature outstretched arms advertising pose from an American counterpart would make for a “fun fact scenario in a law school intellectual property class,” says Toronto intellectual property lawyer John Simpson.

According to CP24, a Minnesota real estate agent filed a lawsuit in August alleging his Hamilton counterpart used the pose that is “an integral part” of his marketing campaign.

It is alleged the copying began after the Hamilton realtor attended a seminar the American hosted in May 2021, CP24 reports. During the seminar, participants were required to sign an agreement restricting “any unauthorized use or distribution of the proprietary concepts, materials, and intellectual property,” according to the news story.

However, following the seminar the Hamilton realtor began an advertising campaign that mimicked the pose popularized by the American, the lawsuit alleges.

Challenged ‘to take action’

For his part, the Hamilton real estate agent says he was part of an “exclusive real estate coaching group that has been sharing marketing ideas and strategies for years” and that the American challenged him and others “to take action and implement many ideas that were presented by him,” CP24 reports.

Simpson, principal of IP and new media law boutique Shift Law Professional Corporation, says the lawsuit “certainly caught my attention” because of some of the unique facts.

“However, under Canadian law and, I expect under U.S. law, there would be very little merit to any trademark claim here,” he tells LegalMattersCanada.ca. “The question arises, ‘What, if anything in all of this is protectable intellectual property? It’s an interesting case from an intellectual property law perspective. It might even be the sort of case that would make a fun fact scenario in a law school exam because it forces you to really look at what is protectable.” 

Simpson, who is not involved in the case but comments generally, says there seems to be confusion by the American as to what constitutes a trademark.

‘It is an advertising concept’

“A photograph of someone with his arms outstretched is not the same as having a trademark,” he explains. “It is not a logo. It is an advertising concept.”

The American claimed his pose was also plagiarized in a video, according to the news report. 

“It is true that a video is protectable in copyright law but only to a certain extent,” says Simpson. “You cannot protect the idea. You can only protect the execution of the idea, the expression of the idea.

“I haven’t seen the video in question but if the content is the same, it starts the same, looks the same and certain things are the same, that could constitute copyright infringement,” he adds. “There may be merit in such a case and enforceable since Canada the U.S. has a reciprocal copyright treaty.”

The lawsuit “raises an interesting issue about what can be protected through trademark law,” Simpson says. 

“Trademark law is all about a certain sign, phrase or logo, something that identifies a trade source,” he says. “If he can establish that he has trademark rights in the outstretched arms that identify him as a trade source then he might have intellectual property rights. 

Rights would not be enforceable

“But the problem is that he is in the United States,” Simpson adds. “Those rights would not be enforceable in Canada.”

He also notes that while he has applied to register a trademark for the outstretched arms, “he could only register it as a logo, not as an advertising concept.”

There is also the legal concept of “passing off,” Simpson says. This occurs when someone passes off their goods or services as those belonging to another business. Passing off can damage the goodwill of the trademark holder and lead to reputational or financial repercussions.

“However, it is unlikely anyone in Hamilton has even heard of the realtor in Minnesota,” he says. “The average consumer is not going to be confused into thinking that there is an association.

“You must prove a likelihood of confusion and that is why it matters that people would need to be familiar with both these trade sources. If they are selling local real estate in different countries there couldn’t be a passing off issue because no one is going to be familiar with both of them.”

Breach of contract could be one legal option

Simpson says one legal option would be to sue for breach of contract for failing to live up to the terms of the confidentiality agreement.

“Those kinds of contracts are usually more about information that is going to be disclosed about a business and how it works to teach you how to do something similar. You are allowed to hear about it, but you are not allowed to use or disclose it,” he says. “However, I very much doubt there was any sort of agreement that really contemplated advertising concepts.”

In the end, Simpson says the case is an impetus for an intriguing scholarly discussion but not much more.

“It asks the question of what is protectable as intellectual property. It appears that ultimately what the American is trying to sue the Hamilton realtor for is for copying an advertising concept. And there are no intellectual property rights in an advertising concept,” he says. “The bottom line, in my opinion, is that this is a case of a real estate agent with an inflated ego and an appetite for litigation.”