The Elephant and the Mountain

This morning I attended the oral hearing for Euro Excellence v. Kraft Foods, the Supreme Court of Canada's latest foray in copyright law in Canada.  The case involves the parallel importation of Toblerone (the mountain) and Cote D'Or (the elephant) chocolates from Europe into Canada.  The hearing involved some almost comical discussion about the creativity associated with the mountain and the elephant, punctuated by Justice Bastarache quizzing the lawyer for Kraft (who is trying to block the imports) whether "you really want us to believe that you want to protect an artistic work" and Justice Binnie asking whether the counsel thought that people purchase Toblerone because of the picture of a mountain on the package. 

While it is notoriously difficult to predict what the court will do based on the hearing, the court virtually gave Euro Excellence a free pass, while challenging Kraft at every turn.  Should the court overturn the Federal Court of Appeal and rule for Euro Excellence, there are two points worth keeping an eye on.  First, Justice Binnie noted that this case felt like an attempt to do through copyright what Kraft is unable to do through trademark law.  The court has been quick to dismiss attempts to substitute one form of IP right for another (consider the Mega Blocks case where the court rejected an attempt to use trademark law after a patent had expired) and might well do the same here.

Second, the court might wade into the doctrine of copyright misuse.  The issue was raised by Euro Excellence, citing U.S. jurisprudence to support the view that the use of copyright in the case should be viewed as an abuse of process.  The argument appeared to gain some traction with court, with Justice Rothstein asking Kraft's lawyer for a response.  After avoiding the question, he was pressed by the Chief Justice and he then proceeded to argue that abuse of copyright process would only occur in Canada in the case of criminal conspiracy.  That would represent an awfully high standard.  I think there is some hope that the court will articulate a copyright misuse doctrine that is consistent with its previously articulated views on a balanced copyright approach and the dangers of over-protection.  I argued for copyright misuse in my contribution to the In the Public Interest book and think that the doctine would be enormously helpful in establishing disincentives against abusive copyright lawsuits.

This case may been under the radar screen of some copyright watchers, but it could literally turn into the elephant in the copyright room.


  1. Mark Goldberg says:

    Copyrighting Chocolate
    Glad to see you are following this one Michael. I wrote about it on Monday ([ link ]) and smelled similar parallels for other grey market goods. On one hand, you have producers that price their goods to match market demand. That creates arbitrage opportunities for importers.

    I suggest that this touches on the ability of consumers to benefit from globalization – not just manufacturers. What does the ‘end-game’ look like?

  2. Why not trademark?
    Can someone – Michael? – explain to me why this is a copyright case at all? I would have thought this to be an open and shut trademark case. That is – if Kraft has the Canadian rights to the “elephant mark”, then Euro Excellence could bring in the chocolate, but not use the protected elephant mark.

    That this has NOT happened leads me to suspect that Kraft did not protect the marks, or that there is some other issue with their use – perhaps they are owned by some other third party, and Kraft does not have an exclusive licence on them?

    As a result, Kraft may be attempting to accomplish via copyright what should properly be done via trademark. And that, it seems to me, would definitely be abuse of copyright.

  3. Foot in Door?
    I think this is a foot in the door issue. If Kraft wins, then it would apply to most imported products. As an example, if you purchased a vehicle outside of Canada with a distinctive copyrightable image (like Ferrari’s prancing horse logo/symbol), imported it, and attempted to sell it. The manufacturer could stop you from selling it and/or sue you for copyright infringement. This would pretty much eliminate many purchases that were not from the manufacturer or its authorized dealer network. Given the perpetual state of copyright, this virtually means anything with a copyrightable element (not necessarily a image) produced in the last century.

  4. Fair Dealing?
    I would have thought that this case and AlB\’s examples would both be acceptable uses because the copyrighted images are being used to represent – accurately – what was inside. If I tried stamping the Ferrari logo on my used Chevy, I would first expect them to show up with a trademark case. But as long as the logo is representing correctly what is \’in the package\’ (chocolate or car, respectively) I\’m having real difficulty seeing these as a copyright concerns.

  5. Tammy Tremblay says:

    Please M. Kraft, do not restrain my righ
    I have been following this case from Afghanistan, where I currently serve along with 2500 other Canadians, because it directly impacts the quality of chocolate put in my care packages and I have only one comment: freedom of trade!!


  6. Do we yet know when the Court will give judgement in this matter ?