Burning Man Resolves Trademark Issue in Canada

A few years ago, the Vancouver-based group called Burn BC started using the names “Burning Man” and “Decompression” in connection with their organization and activities. Burn BC’s organizers also applied with the Canadian Intellectual Property Office to trademark these terms in Canada.

Burning Man encourages participants to incorporate the Burning Man name and logo and the designs of the Man and City into gifts that can be gifted at regional events and on the playa. In keeping with the principle of Decommodification, we also actively protect the event and our community from exploitation and commodification. That includes ensuring Burning Man’s name and other trademarks and copyrights aren’t used in ways that conflict with the 10 Principles. Burn BC’s actions opened the door to that. If Burning Man stood by while an unaffiliated business entity used the marks for their own purposes, we could lose the right to stop them or others from exploiting Burning Man culture.

Since we had been using “Burning Man” and “Decompression” in Canada for nearly 20 years, we asked Burn BC to stop its infringing use and end its trademark registration efforts. Burn BC refused. And while we view legal action as a last resort, in this case we found it to be necessary. We filed a case in April 2014 in Canadian Federal Court.

In January 2015, the Court ruled in Burning Man’s favor, finding that our use of our trademarks had been well known in Canada since the mid-1990s, and that Burn BC’s use of those terms would likely cause confusion between its activities and ours. This violated Canadian trademark law, so the Court ordered Burn BC and its directors to stop using Burning Man’s marks.

In April, we entered into settlement agreements with two of the three Burn BC directors still in the case. The remaining director wasn’t interested in settling at first and continued taking positions the Court had previously rejected. (The Court had earlier denied that defendant’s request to represent Burn BC, as he wasn’t qualified to do so under Canadian law. Burn BC never appealed that decision or retained qualified counsel as ordered by the Court.)

Last month, the third director finally agreed to a settlement on behalf of himself and Burn BC. Following a final Court judgment on Tuesday, all defendants have agreed to refrain from using Burning Man’s trademarks — including Burning Man and Decompression — in connection with their organization or activities. While we had the option, we chose not to enforce a financial judgment against Burn BC.

For us, this was never about money. Our interest in this case was to protect
and preserve Burning Man’s trademarks in Canada — as in the rest of the world — in keeping with the 10 Principles.

Official Burning Man Regionals — including many in Canada — go through a process to ensure their communities and events are in keeping with the values that make our community unique. Burn BC did not do this, and instead tried to claim Burning Man’s trademarks as its own. All organizations need to protect their trademarks or risk losing the ability to control how they are used. This obligation is especially important to Burning Man, since we aren’t just protecting words and symbols, but the principles and culture that underlie them.

You can read more on our trademark policy here.

Update 1/21/16:

For those of you who have asked to see the Court’s judgments in writing, here they are for the record:

About the author: Burning Man

Burning Man

The official voice of the Burning Man organization, managed by Burning Man's Communications Team.

50 Comments on “Burning Man Resolves Trademark Issue in Canada

  • Oatmealmama says:

    What*ever*

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  • Wil says:

    What Oatmealmama said.

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  • HoneyBee says:

    I’m impressed that the org did not go after punitive damages. I am also glad to hear that they are working to maintain the Ten Principles. Thieves are thieves and they deserve being called out on their greed.

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  • Limpy says:

    Eh, I think you probably could have gone after legal costs at least.

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  • The Hustler says:

    Good.

    Its a constant fight to maintain control over the intellectual property of Burning Man.

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    • Sandra Samanta renteria says:

      In humanity we hope to see respect and acknowledgement of others ideas and dreams. When their is a force, a movement, culture, or belief thriving for decades; you can’t just claim it as yours. It is sad to know that others attempt to claI’m innovating beliefs or ideas that have HISTORY.

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    • Nomad says:

      The Borg sorta started in the right direction, except not.

      I am a member of two stone-soup volunteer groups that pre-date Burning Man by decades, that necessarily hold trademarks to literally control the intellectual property created by the members. However, the use of the trade marks is up to the MEMBERS, not licensed from some private third party. But even if the BMP gets complete rights to the DecomLLC trademarks, the BMP is NOT under control of those who created the entity: the burners.

      There was a well-precedented path they could have taken for control of the IP. Instead the term “Burning Man” has come to mean tightly-held top-down control, suppressing rather than inspiring and enabling creativity.

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  • Michael says:

    This shocks me as a Canadian. I would like all the facts to this case because it is a good thing to study from others. Mistakes or successes. Since there is an infringement on the BM org. name I would not like to be ignorant to any infractions on the trademark and will read the link above. Is there any in detailed article so I can know exactly how Burn BC was violating on the trademark?

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  • Ang says:

    The “third defendant” is widely publicizing a widely different version of events, claiming he won.

    Who’s lying?

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  • Jones says:

    “Our interest in this case was to protect
    and preserve Burning Man’s trademarks in Canada”

    But you dropped the ball by telling Canadians for years that we had to follow your trademark laws… when they were not enforceable in Canada and….you were suppose to apply for them. Burn BC brought that tid bit to your attention…..

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  • Bob C says:

    If it was never about the money, then why did your organization originally ask for $25,000 in damages? I see the court only rewarded $10,000.

    http://www.canlii.org/en/ca/fct/doc/2015/2015fc42/2015fc42.html?searchUrlHash=AAAAAQANImRvbWFpbiBuYW1lIgAAAAAB

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  • ecilasam says:

    Burning Man is not a brand but a state of mind. French and in my mind a dream !!!

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  • Enrico says:

    This is a different version of the story from the Burn BC, not sure which one is the closest to the truth.
    http://burners.me/2016/01/14/victory-for-the-little-guy/

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    • Mountie says:

      I would go with the one that actually makes sense rather than just some weird rant on Burners.me.

      The dude is a model of radical self-entitlement, and after reading that article, I can’t help but think he’s also a bit delusional.

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  • Reader says:

    It would be helpful if you’d post the court’s decision(s), any settlement agreement(s) and/or stipulation(s) and the final judgment from the court that sets forth the determination from the court (as to the individuals personally and the corporation) and the ability to enforce that determination/judgment.

    I’m sure you know this, but there’s quite a different position being taken at that other blog (http://burners.me/2016/01/14/victory-for-the-little-guy) that varies markedly from what is written above. A review of the legal documents would shed a great deal of light.

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  • Nomad says:

    Burn BC’s comments make no legal sense whatsoever, just ranting, so this makes way more sense… …HA! Fooled you!!

    Since this was a court case, unless the records were sealed, we should be able to tell what happened by reading. That’s why we have legal precedents in jurisprudence. So far all we are hearing is spin from each side. It’s one thing for him to complain, but it’s pretty weak for the well-funded Borg not to post links to the pertinent legal documents.

    Absent that objective information, it’s pretty clear there is something to hide.

    The first one to post a link to the court records wins!

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  • Ang says:

    The defendant tells the story another way. The original court decision awarded the Burn BC identity and $10,000 damages to Decommodiification. As the story from Decommodiification claims, the defendant was blocked from defending himself and could not afford a lawyer, so it was a default judgement. When he could not or would not pay the damages, Decommodiification sued him personally. That took the case out of trademark violation and into civil litigation, in which he was permitted to defend himself. In this civil case, the damages were canceled, Burn BC was re-awarded back to him, and the case was dismissed.

    The story from Decommodiification is notably vague in details. The defendant published his version of events days before the story above appeared. Did it take Decommodiification’s PR Department days to put a positive spin on the result? Is the corporation really so altruistic that “it was really never about the money”?

    I admit that in cases of Big Corporation vs Little Guy, I can’t help but feel for the smaller. In this case, each are claiming or not claiming exactly the opposite.

    Who’s lying?

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    • Ang says:

      Here it is: the link to actual up-to-date summary of court records:

      http://www.ippractice.ca/file-browser/?fileno=T-939-14#Doc85

      Scroll down past the initial description dated January 2015, down to Entry #91, dated January 19, 2016: “Result: dismissed without costs.”

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    • Burning Man says:

      The January 2015 judgment against Burn BC stands. Burning Man just isn’t enforcing the monetary award. The Court issued a separate judgment this week against the last individual defendant, ending the case.

      See all the Court documents we’ve attached to the bottom of the post for more info.

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      • Ang says:

        Three of the four documents attached are identical. Despite their different file names, they are all the same document from November 2014.

        The two sentences in the same paragraph posted above by Burning Man appear to conflict. “The January 2015 judgment against Burn BC still stands” or “the court issued a separate judgment ending the case”. Which is it? And how can the January 2015 judgment be “enforced”? More superfluous litigation against a case that is “ended”?

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      • Ang says:

        (2nd note)

        If I understand Burning Man correctly, the January 2015 decision that awarded $10,000 in damages (down from the $25,000 originally sought) along with the Burn BC identity was not “enforced” by Decommodification because instead, they chose to seek damages from the defendant personally. In that trial, the defendant defended himself and defeated Decommodification’s claim for monetary damages. The case was “dismissed without costs”.

        So technically, Decommodification could attempt to “enforce” the January 2015 decision and seek $10,000 in damages from the defendant. Doing that, after the civil case was defeated by the defendant representing himself, would be the ultimate in litigious superfluousness. At least they are practicing some semblance of judicial prudence.

        Finally, the stories are starting to gel.

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  • Ang says:

    I posted a link above but it’s not showing….

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  • Burning Man says:

    For those of you who have asked to see the Court’s judgments in writing, we’ve added them as an update at the bottom of the post.

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  • Reader says:

    Thanks for posting the court documents, which make sense to me. However, I believe the link for the settlement agreement is incorrect, as what appears is the November 6, 2014 Court Order and not what appears (to this American) as a typical settlement agreement and I suspect is just the usual link error (even Homer nods). But Canadians do everything different, eh? Thanks in advance.

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  • Ang says:

    The documents attached and the links provided in the various messages pose more questions than answers, and do not support any indication that Decommodification won anything more than one-time trademark protection.

    Decommodification originally sought a cease and desist order with regards to use of their identity (a valid claim), ownership of the Burn BC identity and $25,000 in punitive damages. They ended up with a cease and desist agreement, no ownership of Burn BC, zero dollars in damages…and several thousands of dollars paid out in legal fees.

    Burning Man’s initial post above implies that the defendant was required by law to appoint a lawyer and was not qualified “under Canadian law” to represent himself. Yet the document attached by Burning Man dated November 2014 implies that he may very well have been permitted to represent himself…if not for the lengthy, legal objection filed by Decommodification’s corporate legal team in that document. That objection alone, with its citings of previous cases, must have cost Decommodiification thousands of dollars in legal costs.

    The last sentence in the last document attached says it all: Besides the defendant agreeing to not associate his organization with Burning Man, the entire case “is otherwise dismissed”. No damages paid to Decommodification, no further repercussions against the defendant.

    Which begs the question: What was the point of all this? What did Decommodiification hope to gain from spending untold tens of thousands of dollars fighting a legal battle in a foreign country…for what? Just to put down some nobody clown who nobody ever heard of until gifted with this notoriety?

    Moreover, nothing in what has been made public so far shows any deterrent for the next clown with a lot of time and no money, who, either out of playfulness or vindictiveness, decides to pull the same stunt only to “bleed” Decommodification financially.

    Companies work hard to build their corporate identity and need to protect it. Considering the free-spirited culture they purportedly encourage, could Decommodification practice a bit more prudence rather than costly unbridled litigiousness?

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    • Nomad says:

      Amen, Ang.

      As to, “Companies work hard to build their corporate identity and need to protect it.” That’s fine, but in this case it is a private corporation, DecomLLC or BMP, making a false claim that it represents the volunteer burners that make the NV burn happen. As I noted before, I have participated in stone soup groups that are entirely based on the volunteer members (who pay dues).

      If you want to give DecomLLC/BMP the same claims to “Burning Man” as the Coca-Cola Company claims “Coke,” then it is not a volunteer group event. …Unless Coke starts having volunteers make the product, as well as provide the raw materials, and all the equipment to make the product at no cost to Coke, with Coke only providing the permits, space and the restrooms. Oh, and collecting all the sales revenues, giving no more than 2% to the volunteers.

      And as to the “secret formula,” Coke might claim that, but the volunteers still make the product with no evidence of that secret formula. But at least the Borg has been successful in keeping the secret.

      You can’t have it both ways,

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  • Burning Man says:

    The broken links to two of the legal documents have now been fixed. Sorry for the confusion.

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    • Reader says:

      Thank you for the updated and corrected links to the original court documents and settlement agreement–much appreciated. To quote Jon Snow, I know nothing about Canadian law, but assuming it is similar to US law, which I do know something about, the documents confirm that there’s no there there in relation to the hyped claims made at burners.me.

      Do I now automatically get a ticket for 2016 :) (I’ll pay for it!)

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  • Ang says:

    Thank you, Burning Man, for posting the missing documents. They make for some interesting reading, and while I admit I have only a cursory knowledge of the case, I was inspired enough to read a bit more of what each party is saying to claim victory over the other.

    To put it bluntly, it’s a case of Slick Multi-Million Dollar Corporate PR vs Bloviated Bravado from an Egomaniac out of his league.

    The documents show that the defendant attempted to trademark the Burning Man identity in Canada, including “BC Decompression” and “burningmanarts.ca” ( “.ca” being the extension for Canada, as “.mx” for Mexico). That is such an egregious infringement that one has to wonder why it was attempted if not to deliberately engage Decommodification in lengthy – and very public- litigation.

    In reading his over-the-top “victory” speech/claim, the defendant asserts he was working for *all* Canadian Burners to put Burning Man in the public domain in Canada.

    Is he serious? I am not aware of any public outcry from Canadians claiming they particularly want, or care, or would even be better served by, that corporation in the public domain.

    The fact is that this guy no more represents volunteer Burners in his country than (as Nomad points out in his comment above) Decommodification represents all volunteer Burners who make the event happen.

    But more importantly, this decision by the court, buried within the documents and not highlighted in any great detail by either party in their subsequent spins, highlights the biggest victory for Decommodification and loss for the defendant. The defendant lost in his attempt to claim the Burning Man identity for himself, for whatever purportedly altruistic (real or imagined) intentions he may have had.

    In the end, both sides wound up exactly where they started, save for tens of thousands of dollars (if not more) paid out in legal fees by Decommodification and mental stress and anxiety on the part of the defendant (inspiring him, at some point, to lead a Fund-me campaign to send him on a de-stressing vacation (?!?!)). Subtlety has obviously never been one of his traits.

    As for the defendant’s assertion that he made Decommodification’s lawyer “go pale” and cowered before the defendant’s legal mastery and “destruction” of Decommodification’s case against him…um, yeah.

    Both sides won some and lost some. The defendant keeps his company and his company only and Decommodification keeps theirs. Each can claim victory (and one can claim he “destroyed”) the other, but I’m calling it a draw.

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  • Ang says:

    For anybody who’s interested, there is more buried in the documents submitted in the case of Multi-Million-Dollar Corporate Rapiciousness vs Megalomaniacal Bloviated Bravado.

    The defendant never did give much explanation of why he was denied the ability to defend himself in the original trial. For that matter, neither did Decommodification, other than the debatable claim that it was “required under Canadian law”. But it was even stranger for the defendant, considering how much pride he took in compiling his own defence, that he would not stop to confirm whether he would legally be permitted to do that. Generally, defendants can defend themselves without a lawyer, so long as it does not present a conflict and especially- unless the prosecutor or plaintiff can prove that the defendant is lacking the knowledge of legal proceedings and would be wasting the court’s time. That is what Decommodification argued in their submission and the judge agreed. While that is not the question of who did or did not win, it should probably be considered when reading the “victory” speeches of the defendant.

    The defendant claims (very pointedly) that he “was literally one step away from putting Burning Man in the public domain”. Does he have evidence of this? It’s not in the attached documents. In fact, what is in the document dated December 2015 in one of the closing paragraphs is an agreement (or acquiescence, depending how you view it) that he will not make any further incursions on Burning Man trademarks, or Burning Man will sue his ass off for $20,000.

    This conflicts not just with the defendants public proclamations, but also Decommodification’s assertion that they are “choosing not to enforce” monetary damages against the defendant at this time. No kidding, because based on the documents, that would be an exercise in litigious futility.

    So the defendant sought to make a public spectacle of himself and succeeded. If analogous to David vs Goliath, this would be the Goliath threatening to punch out David if he ever crossed over the fence again, and David prancing around claiming he just punched out Goliath because Goliath didn’t punch him out this time.

    Few Burners feel represented by a megalo-multi-million-dollar conglomerate who goes litigiously psycho with the slightest infringement. But neither do they automatically rally around those who seek to gain from personal notoriety. Both won, both lost.

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  • diver says:

    Decompression is a very old scuba diving term that means off gassing nitrogen from a persons body. The expression pre dates Burning Man by many decades. Better sue the 1 million+ scuba divers on Earth.

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    • JV says:

      It’s the context that matters. Burning Man has not copyrighted the word “decompression,” only it’s use in relation to an arts type festival or event, where previous to Burning Man, there was no relationship between the word “decompression” and the arts. I’m willing to bet that if a scuba group held a gathering called Decompression, the BMORG would not take action as there is a logical relationship between the word and scuba diving that predates Burning Man.

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  • diver says:

    “Since we had been using “Burning Man” and “Decompression” in Canada for nearly 20 years, we asked Burn BC to stop its infringing use and end its trademark registration efforts.”
    So you can now be sued by the law of physics, medicine and every scuba entity and diver in existence.

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