UPDATE (June 11): Read my follow-up to this story here.
Sam Norouzi is a busy guy these days. He’s starting a television station from scratch. He’s dealing with the technical side, acquiring a transmitter and antenna, as well as the content side, dealing with show producers. The plan is to have the station on the air some time in the summer, with a formal launch in the fall.
Norouzi is the manager of ICI, a new over-the-air ethnic television station in Montreal that was approved by the CRTC when it allowed Rogers to buy CJNT. Operating under the callsign CFHG-DT, it will air on Channel 47, using the same Bell-owned transmission tower on Mount Royal that was used briefly by CFCF as a temporary digital antenna while its analog transmitter was still running in 2011.
ICI, which stands for International Channel/Canal international, wants to bring ethnic television in Montreal back to where it was before CJNT, a producers’ cooperative where people sell advertising for their own shows and the station doesn’t try to make money by pushing the limits of its licence with third-rate primetime American programming.
It’s a big undertaking, with a very large amount of local programming, and it’s being put together on a pretty short time frame.
But now Norouzi has a new headache to deal with: The CBC doesn’t want him to use “ICI” as the station’s name.
The public broadcaster sent a lawyer’s letter to Norouzi’s company this week asking it to cease and desist the use of the name ICI. A statement of claim was filed with the court on Monday noting CBC’s request to have Norouzi’s trademark for ICI expunged. (Hat tip to the Citizen’s Glen McGregor for alerting me to that.) Norouzi (whose real name is Nowrouzzahrai) wasn’t aware of the letter when I called him Wednesday afternoon, because he’s currently in Florida. After checking in with his father, Norouzi confirmed he had received the letter.
Marc Pichette, a spokesperson for Radio-Canada, confirmed that the corporation asked the station to change its name “because « ici » has been a Radio-Canada staple for decades (Ici Radio-Canada) and because it is presently featured in an advertising campaign promoting Radio-Canada’s very personal relation with its audience. In these ads, people evoke how Radio-Canada programs that they have seen “ici” have been a pivotal in finding their vocation or lifelong interests.”
There’s another reason, though. Le Devoir reported Wednesday that Radio-Canada is thinking of rebranding, and calling itself “Ici.” Needless to say that would cause confusion.
Some of the trademarks registered to CBC
A search of the Canadian trademarks database shows that the CBC registered a series of trademarks last fall with the word “ici” in it.
But Norouzi also has a trademark registered for his use of the term “ICI”. That trademark was filed in August 2011 and registered in September, before the CBC’s trademark applications were filed.
Asked about that, Pichette said “ici has been a Radio-Canada staple for decades” because it’s been used with the Radio-Canada name (à la “Ici Radio-Canada“). He didn’t say why the CBC is only acting on this now while the TV station’s use of the name ICI has been known since at least last fall and its trademark dates back a year and a half.
Norouzi said he was frustrated because he’d done everything he was supposed to, making sure nobody else was using the name for a TV station and then registering it himself and getting it approved. He said he doesn’t have enough money to hire lawyers to fight the CBC’s legal department, which means if the CBC decides to make this a legal case, it will probably win by default.
All this over a three-letter word.
UPDATE (March 28): Asked about the possible name change in the House of Commons, Heritage Minister James Moore says its name is enshrined in the law and it won’t change. Though I’m not sure how much control the government has over branding. The logos above show the official name would remain “Radio-Canada” but with brands focused on “ici”.
Meanwhile, CBC announces it’s going ahead with the rebranding, but Radio-Canada’s name remains “Radio-Canada”.
TL;DR: Norouzi appears to have gotten the registration sooner than he should have, but did file first, and the CBC may be abusing its special trademark rights as a Crown corporation to circumvent it.
I’m not a lawyer, but based on my amateur understanding of Canadian trademark law, I can’t say either side is completely in the right here. That said, Mr. Norouzi seems to have a stronger case.
On the one hand the CBC can make a good case that Mr. Norouzi’s registration was illegitimate because he isn’t actually using the mark in commerce yet – i.e. the “ICI” TV station isn’t on the air. Use in commerce is (generally) a prerequisite to registration. There are ways of bending the rules when it comes to providing the required specimen of use to get or keep a registration, but if it’s challenged by the CBC, that specimen may not hold up in court.
On the other hand, first, Mr. Norouzi’s application was filed more than a year before the CBC’s applications. Indeed the CBC would have had an opportunity to oppose Mr. Norouzi’s mark when it was advertised (published in the Canada Gazette) last spring and either wasn’t paying attention or otherwise chose not to do so at the time.
Moreover, with the “ici [name]” designs listed here, the CBC is taking advantage of (perhaps abusing) a special kind of trademark – the “official mark”, which is only available to certain types of governmental organizations and Crown corporations – to try to get around the existing registration.
As I understand it, an official mark is a means of short-circuiting the traditional trademark registration process: it is typically approved regardless of any similar trademarks on the books and cannot be opposed by third parties (at least not in the usual process). Once published, it has the same force as a regular registered trademark, i.e. it can be used to prevent other parties from using or registering similar names.
Finally, while I can understand where the CBC is coming from with the “Ici Radio-Canada” slogan, in terms of trademark law it may be a bit of a stretch to claim rights on a common French word like “ici” when it hasn’t really been used in a trademark-type sense previously. And again, it hasn’t really attempted to protect “ici” before, even though it had opportunity to do so very recently.
On balance, and given the information available, I think Mr. Norouzi has the stronger case here (assuming of course equivalent legal resources). If the Ceeb wants to go ahead with rebranding the French side to “ici”, I think it at least has a moral obligation to pay Mr. Norouzi’s costs in finding and adopting a new name.
I may be wrong, but it seems that Radio-Canada “borrowed” the ICI slogan from CNN a decade ago. SRC ran a TV promo that seemed to copy a popular CNN campaign in which CNN personalities looked into the camera and said “this is CNN.”
The Radio-Canada version seemed identical to the CNN one. The American network had previously used James Earl Jones as the announcer. But this campaign and the SRC one featured correspondents around the world using the magic phrase.
Well, CBC’s longest-running comedy show has them all beat: In the 70s they began every show with: “This is the The Royal Canadian Air Farce. Ici Farce-Canada!”
Bigger question: why would Rad-Can want to rename itself after 5 decades?
Well, I know why, I just wonder why they think the people who fund them will roll over and accept it.
They may change their name, or their branding. Perhaps in an attempt to hide from the Conservative governments cut backs. But, I think the government will still be able to find them and cut their budget :}
Was the removal of “Canada” in Radio-Canada politically motivated ? It’s raises eyebrows especially since there is a PQ government in power.
Since the CBC is funded and its board appointed by the federal, not provincial, government, I highly doubt there’s some secret conspiracy between the PQ and the corporation.
It does reflect the fact that RadCan is swimming with separatists. Some of whom become PQ ministers (Drainville, Duchesne).
And Christine St-Pierre and Liza Frulla. Oh wait…
While of course not everyone at Radio-Canada is a separatist, Radio-Canada’s love affair with sovereignty goes back all the way to the beginning of the Quebec independence movement itself. Even Aislin, the Montreal Gazette’s award winning political cartoonist, took a shot at the issue way back in 1977:
http://www.mccord-museum.qc.ca/en/collection/artifacts/M986.286.182
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