Magazine Reports on Wes Mussio of Mussio Goodman Successful Court Appeal

As reported in the August issue of Take Five by OnPoint Legal Research, the BC Court of Appeal has rejected ICBC’s attempt to shut down ICBCadvice.com, a free informational website for those dealing with ICBC claims, owned by Wes Mussio’s wife. This was ICBC’s second attempt to remove the website – the first attempt was rejected by the BC Supreme Court in 2012. ICBC claimed that the website unlawfully infringed on the company’s copyright license of the term “ICBC” and, therefore, violated the Trade-Marks Act. However, the Court of Appeal sided with Wes Mussio, counsel for the Respondant, confirming that ICBCAdvice.com was not in violation of the Act.

Counsel Wes Mussio commented to Take Five:

ICBC was attempting to argue that any website with the acronym ‘ICBC’ in it is a copyright infringement. The Court of Appeal made it clear that where the website is not trying to confuse web browsers, there is no copyright infringement. It opens up the door to allow a wider reaching use of website names. If the Court of Appeal would’ve allowed the appeal, ICBC could’ve gone after dozens and dozens of websites that use the acronym ICBC in it. For that reason, the case is very important to law firms and other companies marketing in the area of ICBC Claims.

A Summary of the Court Decision in Take Five is as Follows:

The appeal was dismissed. The Appellant argued that the trial judge failed to apply the correct tests for determining breaches of ss. 9 and 11 of the Trade-marks Act and with respect to passing-off. The Appellant further argued that the judge erred in mixed fact and law in finding that the use of the ICBCadvice.com domain name did not violate the Trade-marks Act or amount to passing-off. The Court of Appeal began its analysis by determining that because the resolution of issues raised involved the legal effect of undisputed facts, the appropriate standard of review was correctness. The Appellant submitted that ICBCadvice.com so nearly resembled its mark as to be likely mistaken for it. In particular, it pointed to the fact that its official mark comprises the first and, arguably, dominant part of the domain name.

The Appellant went on to argue that its rights to the mark could not be circumvented by adding a non-distinctive word such as “advice” after its official mark, as the consumer would likely be led to believe the Appellant itself was offering advice on its business and services. The Court of Appeal disagreed, commenting that the argument failed “to give the ‘relevant consumer’, i.e. an Internet user, credit for even the most basic understanding of a domain name.” The Appellant submitted that the Court of Appeal must take care to avoid failing to differentiate the test applicable to official marks from the test applicable to trade-marks. While the Court acknowledged the difference between the tests, it found that official marks like any others serve an identification function, and it could not accept that the average Internet user would mistakenly think ICBCadvice.com referred to advice provided or endorsed by the Appellant. Therefore, the Court of Appeal held that the website and the related domain names did not contravene the Trade-marks Act. The Court rejected the Appellant’s passing-off argument for the same reasons.

Mussio Goodman Achieves Victory in Supreme Court of Canada

The British Columbia Court of Appeal ruled in our client’s favour, overturning the lower court’s decision and prohibiting ICBC from relying on a zipline waiver to deny compensation for injuries sustained in a car accident.

ICBC has since sought leave to appeal the decision to the Supreme Court of Canada in Ottawa.

ICBC’s argument is that the decision was wrong and has implications across the country.

We have argued in response that the Court of Appeal decision was properly decided, and that the issue specifically pertains to British Columbian legislation (the Insurance (Vehicle) Act), and therefore the highest Court in the land need not intervene.

Should the Supreme Court of Canada grant leave to ICBC, the hearing will likely take place in early 2015.

24 hours Vancouver Recently Reported on the Mussio Goodman Court Success

As reported by 24 Hours Vancouver, we are pleased to announce that ICBC has lost for the second time in trying to convince our Court that the website belonging to Wes Mussio’s wife (icbcadvice.com) was infringing on ICBC’s trademark.

In 2012, the BC Supreme Court ruled in favour of Mussio; however, ICBC appealed the decision to the BC Court of Appeal.

ICBC’s primary argument was that the use of “ICBC” in a website domain name by a personal injury lawyer was misleading and in breach of ICBC’s intellectual property rights. In particular, ICBC argued that the average consumer would likely believe that ICBC itself was offering advice on its business, rather than an independent entity.

The BC Court of Appeal disagreed and dismissed the appeal as follows:

[37]         I am unable to accept this argument as it fails to give the “relevant consumer”, i.e., an Internet user, credit for even the most basic understanding of the function of a domain name.  Even though there is some resemblance between ICBCadvice.com and ICBC’s family of marks, the average Internet user with an imperfect recollection of ICBC’s marks would not likely be mistaken by the domain name.  They understand, for example, that a domain name which, in part, contains the name of a business or its acronym will not necessarily be affiliated with or endorsed by that business and may, instead, be the subject matter of the website or entirely unrelated to that business.  As well, they understand that it is necessary to view a website to determine whose site it is.

[39]         As indicated above, I am unable to accept that the average Internet user does not appreciate that domain names—which are limited to short combinations of alphanumeric characters—are often merely descriptive of the subject matter of the website to which the domain name resolves, rather than indicating affiliation, source, or endorsement.  Put otherwise, a person who conducted a search—using, for example, the terms “ICBC” and “advice”—which returned ICBCadvice.com in its list of results would not, based solely on observing that domain name, mistakenly believe that the “advice” referred to is provided or endorsed by ICBC.  Neither would they, as a matter of first impression, be mistaken by the fact that the domain name starts with “ICBC”.  The most that person would conclude is that the website likely had something to do with the corporation.

[40]         In the result, I agree with the trial judge that the website ICBCadvice.com and its related domain names do not contravene ss. 9 and 11 of the Trade-marks Act.

Wes Mussio, who represented his wife in both the Supreme Court and Court of Appeal, is quoted by 24 Hours Vancouver as saying that there’s a sizable list of domain names with the letters “ICBC” in them, such as icbctips.ca or icbc-claims.com, but “they never went after any of them.”

Mussio said his wife created the website in 2006 to share information from motor vehicle injury lawyers, and to refer potential clients to a list of lawyers on the site.

“She thought it would be a good idea to retain some lawyers, including me, to write articles and put up a public service website so people are better informed. At the time it was done, there weren’t a lot of websites with information back in 2006,” he said.

The website also offers a book — earlier named ICBC Claim Guide, and later changed to ICBCadvice Claim Guide. An online version of the book is now available.