Tragically Hip lawsuit against brewer is a ‘run-of-the-mill’ case

Intellectual Property /
John Simpson
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By Tony Poland, LegalMatters Staff • The Tragically Hip’s trademark infringement lawsuit against Mill Street Brewery may raise the question of whether appropriating something of iconic cultural significance can be justified but any such argument is unlikely to succeed, says Toronto intellectual property lawyer John Simpson.

In a lawsuit filed in Federal Court last month, it is alleged the brewery tried to “pass off on the fame, goodwill and reputation” of the band when it branded and marketed its 100th Meridian Amber Lager.

“Mill Street has engaged in a course of conduct to, unilaterally and without permission, ride on the coat tails of one of the most beloved bands in Canadian music history by marketing its beer with reference to The Tragically Hip and one of its many quintessentially Canadian chart-topping tracks, ‘At the Hundredth Meridian”, the lawsuit states. “Mill Street deliberately amplified those efforts during The Tragically Hip’s final and nationally celebrated tour, which was precipitated by the announcement that the band’s iconic frontman, Gord Downie, had been diagnosed with terminal cancer.”

Leverage the value of trademarks

Simpson, principal of IP and new media law boutique Shift Law Professional Corporation, says the lawsuit is a simple matter of a trademark owner preventing others from trying to leverage the value of its trademarks without paying for it. 

“Aside from the fame and cultural significance of the parties, it’s a very straightforward, run-of-the-mill passing-off case,” he tells LegalMattersCanada.ca. 

The iconic Canadian band alleges that Mill Street “unlawfully created, fostered and failed to correct, confusion in the public.” The allegations have not yet been proven in court.

“We are disappointed this step has been taken and are confident that the claim is without merit,” Daryl Miner, Mill Street’s president and general manager, said in a statement to the media.

According to the lawsuit, The Tragically Hip’s At the Hundredth Meridian “is one of its most recognizable and celebrated songs,” receiving more than 15 million plays on music streaming services.

Used song to sell products

Since its release in 1992, the band has used the song’s trademark to sell various products in Canada, the lawsuit claims.

The band alleges that since the launch of its amber lager in 2014 “Mill Street has impliedly and explicitly linked its 100th Meridian with The Tragically Hip unilaterally and without the band’s permission, including on various social media platforms.”

“In a lawsuit like this, someone is creating the impression in the minds of consumers that there is some sort of sponsorship or some licence or some formal association,” says Simpson, who is not involved in the lawsuit and comments generally.

While Mill Street has yet to file a defence,  Simpson says he could see them  trying to raise an “iconic cultural significance defence” in this case.

“It does raise a question of whether a trademark owner becomes so well-known, so culturally significant that their brand almost becomes public domain,” Simpson says. “They could say this isn’t trademark use but rather just fandom. They are associating themselves not with someone’s intellectual property law but rather with something of iconic cultural significance.

“There might be circumstances where that might work. But  there is no existing doctrine in Canadian trademark law that says you can appropriate something of iconic cultural significance for your own purposes. Even if there was such a doctrine, this surely would not be the case for that. Part of the reason is that the defendant is a beer company, not a charitable or political organization or something like that.”

Geographic term

Simpson says the brewer could also make the claim that the 100th meridian is a geographic term.

“But the problem with the geographic significance defence is that that’s not the aspect of the term that they’re promoting,” he says. “The consumer’s impression is always what’s determinative in a trademark case. Even though they can say it’s descriptive of where the ingredients come from, that wouldn’t be the average consumer’s impression.”

Simpson says he wouldn’t be surprised if the matter was settled before getting to court.

“Obviously this does not look good for Mill Street, which works to have a very wholesome, Canadian brand,” he says. “If you exploit Canadians’ love for The Tragically Hip  while angering the band in the process, you essentially undermine the whole point of your association. If you’re trying to be a fan but the object of that fandom is suing you, that is really damaging.”